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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`Civil Action No. ____________________
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`JURY TRIAL DEMANDED
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`MARS, INCORPORATED
`6885 Elm Street
`McLean, Virginia 22101
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`and
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`MARS PETCARE US, INC.
`315 Cool Springs Boulevard
`Franklin, Tennessee 37057,
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` Plaintiffs,
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` v.
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`SIMMONS PET FOOD, INC.
`316 North Hico Street
`Siloam Springs, Arkansas 72761,
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` Defendant.
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`
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`COMPLAINT
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`Plaintiffs Mars, Incorporated and Mars Petcare US, Inc. (collectively, “Mars”) bring this
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`action against Defendant Simmons Pet Food, Inc. (“Defendant”) and allege as follows:
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`PRELIMINARY STATEMENT
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`1.
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`This is an action for direct and contributory trade dress infringement, false
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`designation of origin, unfair competition and related claims under the federal Lanham Act, 15
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`U.S.C. §§ 1051 et seq. (as amended) and Virginia law.
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`2.
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`Mars is a leading manufacturer of pet food in the United States. Mars sells
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`PEDIGREE-branded canned dog food, which features a trade dress that is unique and unusual in
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`the marketplace. Mars has invested many millions of dollars in advertising the trade dress for
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`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 2 of 11 PageID# 2
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`PEDIGREE canned dog food and has earned billions of dollars in revenues from the sale of the
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`products featuring its well-known trade dress.
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`3.
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`Defendant manufactures, distributes and sells a competing canned dog food under
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`the name “Signature.” Rather than invest the time, money and resources to create its own
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`distinctive trade dress, Defendant simply helped itself to Mars’s famous trade dress.
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`4.
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`Defendant’s manufacturing, distribution and sale of dog food bearing the infringing
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`trade dress is likely to cause consumer confusion and is irreparably harming the goodwill and
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`reputation of Mars and PEDIGREE.
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`THE PARTIES
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`5.
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`Plaintiff Mars, Incorporated, is a Delaware corporation with a principal place of
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`business in McLean, Virginia, and owns the trade dress for PEDIGREE canned dog food.
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`6.
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`Plaintiff Mars Petcare US, Inc. is a Delaware corporation with a principal place of
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`business in Franklin, Tennessee. Mars Petcare is a wholly owned subsidiary of Mars, Incorporated,
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`and exclusive licensee of the trade dress for PEDIGREE canned dog food.
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`7.
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`Defendant Simmons Pet Food, Inc. is an Arkansas corporation with a principal
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`place of business in Siloam Springs, Arkansas. Defendant manufactures canned dog food bearing
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`labels that infringe Mars’s trade dress for its PEDIGREE canned dog food. Defendant distributes
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`and sells those products nationwide to companies and retailers with actual knowledge that they in
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`turn advertise and sell the products to dog owners at stores throughout the United States, including
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`in Virginia.
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`JURISDICTION AND VENUE
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`8.
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`This Court has subject-matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C.
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`§§ 1331, 1338, and 1367.
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`9.
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`This Court has personal jurisdiction over Defendant because Defendant
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`manufactures canned dog food bearing infringing trade dress, which it distributes and sells to
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`customers that Defendant knows have locations in Virginia and advertise and sell those products
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`to dog owners in Virginia. Defendant’s unlawful conduct is causing Mars to suffer irreparable
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`injury in this judicial district.
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`10.
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`Venue is proper because Defendant is subject to personal jurisdiction in this district.
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`28 U.S.C. § 1391(b)(1), (c)(2), (d). Venue is also proper because Plaintiff Mars, Incorporated, the
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`owner of the trade dress for PEDIGREE canned dog food, resides in this district and a substantial
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`portion of the events or omissions giving rise to the alleged claims occurred in this district. 28
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`U.S.C. § 1391(b)(2).
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`FACTUAL BACKGROUND
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`I.
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`Mars and the Famous Trade Dress for Pedigree Canned Dog Food
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`11. Mars is a world’s leading pet food manufacturer and PEDIGREE is among its most
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`famous brands.
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`12.
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`As of 2020, PEDIGREE is the best-selling dog food brand in the United States by
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`revenues. Mars sells PEDIGREE canned dog food in various flavors.
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`13.
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`Decades ago, Mars adopted a trade dress for the PEDIGREE canned dog food that
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`was and continues to be unique and unusual in the field.
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`14.
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`Samples of Mars’s PEDIGREE canned dog food products bearing the distinctive
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`trade dress are shown below:
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`15. Mars’s trade dress for its PEDIGREE canned dog food features the following
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`elements:
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`a.
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`b.
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`c.
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`a predominant yellow background;
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`a white circular halo in the middle of the label;
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`the image of a dog’s head and neck with its mouth open and tongue sticking
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`out positioned to the right of and adjacent to the circular halo;
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`d.
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`the image of a yellow, round bowl containing dog food at the bottom of the
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`label positioned to the left of the dog’s head and touching the dog’s neck;
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`and
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`e.
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`a unique color convention for different flavors of dog food, e.g., orange for
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`Chicken flavor, teal for Chicken & Rice flavor, brown for Beef, Bacon &
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`Cheese flavor.
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`The overall visual and commercial impression created by the combination of these elements of the
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`trade dress for Mars’s PEDIGREE canned dog food is referred to as the “PEDIGREE Trade
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`Dress.”
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`16. Mars’s PEDIGREE Trade Dress is inherently distinctive because it has an overall
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`visual impression that is unique and unusual in the field of canned dog food.
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`17. Mars’s PEDIGREE Trade Dress has acquired distinctiveness nationwide through
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`substantially exclusive use in commerce, substantial advertising and promotion featuring the
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`PEDIGREE Trade Dress, and substantial revenues from the sale of canned dog food bearing the
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`PEDIGREE Trade Dress.
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`18. Mars’s canned dog food bearing the PEDIGREE Trade Dress is sold nationwide,
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`including in grocery stores (e.g., Safeway, Kroger), big box stores (e.g., Target, Wal-Mart), pet
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`stores (e.g., Pet Smart) and online (e.g., Amazon, Chewy).
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`19. Many millions of dog owners throughout the United States have purchased canned
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`dog food bearing the PEDIGREE Trade Dress. Mars’s PEDIGREE Trade Dress is widely
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`recognized among consumers and dog owners nationwide as designating the source of dog food
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`and was so before the acts of Defendant giving rise to this action.
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`20. Mars’s PEDIGREE Trade Dress is non-functional. The PEDIGREE Trade Dress is
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`not essential to the use or purpose of canned dog food and does not affect the cost or quality of the
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`product. Affording trade dress protection to the PEDIGREE Trade Dress would not place
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`competitors at a significant non-reputation related disadvantage because, among other things, there
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`are an unlimited number of alternative, non-infringing trade dresses available for canned dog food.
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`21.
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`Consumers and dog owners nationwide associate the PEDIGREE Trade Dress
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`exclusively with a single source and did so before the unlawful acts of Defendant.
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`II.
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`Defendant and Its Infringing Trade Dress
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`22.
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`Defendant is manufacturing, distributing and selling canned dog food featuring
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`labels that are highly similar in overall visual and commercial impression to Mars’s PEDIGREE
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`Trade Dress. Examples of Defendant’s canned dog food featuring those labels are shown below:
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`23.
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`Defendant’s labels appear on at least the following products: (a) Chopped Supper
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`Adult Dog Food Chunky Chicken Dinner, Universal Product Code (“UPC”) No. 0 21130 42262
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`3; (b) Chopped Supper Adult Dog Food with Chopped Beef, UPC No. 0 21130 42024 7; (c)
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`Chopped Supper Adult Dog Food Chopped Combo with Chicken, Beef & Liver, UPC No. 0 21130
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`42022 3; (d) Hearty Supper Adult Dog Food with Beef, Egg, Bacon & Cheese, UPC No. 0 21130
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`42028 5; (e) Hearty Supper Turkey, Rice & Vegetable Dinner Adult Dog Food, UPC No. 0 21130
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`42025 4; (f) Gravy Cuts Adult Dog Food Chop Cuts with Chicken & Rice in Sauce, UPC No. 0
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`21130 42261 6; and (g) Gravy Cuts Adult Dog Food with Beef Cuts in Gravy, UPC No. 0 21130
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`42148 0 (collectively, the labels on these products are referred to as “Defendant’s Infringing Trade
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`Dress”).
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`24.
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`Defendant’s Infringing Trade Dress, like Mars’s PEDIGREE Trade Dress, features
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`a predominant yellow background with a white circular halo in the middle of the label. Like Mars’s
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`PEDIGREE Trade Dress, Defendant’s Infringing Trade Dress also features the image of a dog’s
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`head with its mouth open and tongue sticking out adjacent to the right of the circular halo, and the
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`image a round, yellow bowl filled with dog food on the bottom of the label positioned to the left
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`of the dog’s head and touching the dog’s neck.
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`25.
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` Defendant’s Infringing Trade Dress also copies Mars’s color conventions for
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`different flavors:
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`Mars’s Chopped Ground Dinner with
`Chicken
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`Defendant’s Chopped Supper Adult Dog
`Food Chunky Chicken Dinner
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`Mars’s Choice Cuts in Gravy
`Chicken & Rice Flavor
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`Defendant’s Gravy Cuts Adult Dog Food
`Chop Cuts with Chicken & Rice in Sauce
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`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 8 of 11 PageID# 8
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`Mars’s Chopped Ground Dinner with
`Beef, Bacon & Cheese Flavor
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`Defendant’s Hearty Supper Adult Dog
`Food with Beef, Egg, Bacon & Cheese
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`26.
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`Defendant’s canned dog food bearing the Infringing Trade Dress is sold in some of
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`the same stores as Mars’s canned dog food bearing the PEDIGREE Trade Dress.
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`27.
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`Defendant’s canned dog food bearing the Infringing Trade Dress competes with
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`Mars’s canned dog food bearing the PEDIGREE Trade Dress and is advertised and offered for sale
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`to the same customers and dog owners.
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`28.
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`Defendant’s Infringing Trade Dress is likely to cause confusion, mistake, and
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`deception that Defendant’s canned dog food products are manufactured, approved or licensed by
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`or connected or associated with Mars or PEDIGREE.
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`29.
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`Prior to commencing use of the Infringing Trade Dress, Defendant manufactured,
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`distributed, and sold canned dog food bearing labels that did not infringe Mars’s PEDIGREE Trade
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`Dress. Defendant commenced manufacturing, distributing, and selling canned dog food bearing
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`the Infringing Trade Dress with the intent to trade on the goodwill and reputation of Mars’s
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`PEDIGREE Trade Dress.
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`30. Mars has lost control over the goodwill and reputation associated with its
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`PEDIGREE Trade Dress due to Defendant’s manufacturing, distribution and sale of canned dog
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`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 9 of 11 PageID# 9
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`food bearing the Infringing Trade Dress and Defendant’s customers’ advertising and sale of those
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`products directly to dog owners.
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`31.
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`Defendant’s manufacturing, sale and distribution of canned dog food bearing the
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`Infringing Trade Dress and Defendant’s customers’ advertising and sale of those products directly
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`to dog owners is irreparably harming Mars.
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`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))
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`32. Mars re-alleges Paragraphs 1 through 31, above, as part of this count.
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`33. Mars owns nationwide common law rights to the PEDIGREE Trade Dress for
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`canned dog food.
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`34.
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`35.
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`The PEDIGREE Trade Dress is non-functional.
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`Defendant’s use of the Infringing Trade Dress in connection with manufacturing,
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`distribution, and sale of canned dog food is likely to cause consumers, including dog owners, to
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`erroneously believe that Defendant’s dog food is manufactured, sponsored, or otherwise licensed
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`or approved by or connected with Mars or PEDIGREE.
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`36.
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`Defendant sells and distributes canned dog food bearing the Infringing Trade Dress
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`to companies and retailers who Defendant knows in turn advertise those products to dog owners
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`and sell those products in stores directly to dog owners throughout the United States.
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`37.
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`Defendant’s conduct constitutes direct and contributory trade dress infringement,
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`false designation of origin and unfair competition in violation of Section 43(a) of the Lanham Act,
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`15 U.S.C. § 1125(a).
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`38.
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`Unless enjoined, Defendant will continue to engage in this unlawful conduct which
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`causes irreparably injury to Mars.
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`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 10 of 11 PageID# 10
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`COUNT 2
`Direct and Contributory Trade Dress Infringement, False Designation of Origin, Unfair
`Competition and Palming Off Under Virginia Law
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`39. Mars re-alleges Paragraphs 1 through 38, above, as part of this count.
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`40. Mars owns nationwide common law rights to the PEDIGREE Trade Dress for
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`canned dog food.
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`41.
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`42.
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`The PEDIGREE trade dress is non-functional.
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`Defendant’s manufacturing, distribution and sale of canned dog food bearing the
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`Infringing Trade Dress is likely to cause consumers, including dog owners and others, to
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`erroneously believe that Defendant’s products are manufactured, sponsored, or otherwise
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`approved or licensed by or connected with Mars or PEDIGREE.
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`43.
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`Defendant sells and distributes canned dog food bearing the Infringing Trade Dress
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`to customers who Defendant knows in turn advertise those products to dog owners and sell those
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`products directly to dog owners throughout the United States.
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`44.
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`Defendant’s wrongful conduct constitutes direct and contributory trade dress
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`infringement, false designation of origin, unfair competition and passing off in violation of
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`Virginia law.
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`45.
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`Unless enjoined, Defendant will continue to engage in this unlawful conduct which
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`causes irreparable injury to Mars.
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`PRAYER FOR RELIEF
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`WHEREFORE, Mars respectfully asks the Court to:
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`a. Enter judgment for Mars and against Defendant on all claims for relief alleged
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`herein;
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`b. Enter a permanent injunction enjoining Defendant and its agents, servants,
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`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 11 of 11 PageID# 11
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`employees, attorneys, officers, and all others in privity and acting in concert with it
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`from using or causing others to use the Infringing Trade Dress or a similar trade
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`dress, pursuant to 15 U.S.C. § 1116;
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`c. Order Defendant to deliver up for destruction all labels, signs, prints, packages,
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`wrappers, receptacles, and advertisements in Defendant’s possession depicting the
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`Infringing Trade Dress or a similar trade dress, pursuant to 15 U.S.C. § 1118;
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`d. Require Defendant to file with the Court and serve on Mars within thirty (30)
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`days after entry of an injunction, a report in writing under oath setting forth in
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`detail how Defendant has complied with the Court’s injunction;
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`e. Award reasonable attorney’s fees and costs to Mars under federal and state law;
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`and
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`f. Award Mars any other and further relief as the Court may deem just and proper.
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`JURY DEMAND
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`Mars demands a trial by jury in connection with this Complaint against Defendant.
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`Date: September 1, 2020
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`MARS, INCORPORATED and MARS
`PETCARE US, INC.
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`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
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`11
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