Ninth Circuit

Eat Right Foods Ltd. v. Whole Foods Market, Inc., No. 15-35524 (9th Cir. 2018)

Court Description: Trademark The panel vacated the district court’s grant of summary judgment in favor of the defendant in a trademark infringement case, affirmed the district court’s denial of the plaintiff’s cross-motion for summary judgment, and remanded with instructions. Eat Right Foods, which sold “EatRight”-branded cookies to Whole Foods for many years, alleged that Whole Foods infringed on its trademark by selling a variety of foods under the “EatRight America” mark. The panel concluded that disputed material facts establishing or defeating the affirmative defenses of laches and acquiescence had not been resolved. As to laches, the panel concluded that if the district court had credited Eat Right Foods’ evidence that it waited to file suit because it was attempting to resolve its claims against Whole Foods without litigation, then the court might have come to a different conclusion about the reasonableness of the delay.

The panel also vacated the district court’s finding that Whole Foods suffered expectations-based prejudice. As to acquiescence, the panel held that the flaws in the district court’s unreasonable delay and prejudice analyses also affected its acquiescence analysis. In addition, the district
court failed to make factual findings regarding the extent and reasonableness of Whole Foods’ reliance on Eat RightFoods’ actions.