Jacobs v. Whole Foods Market Group, Inc., No. 1:2022cv00002 – Document 27 (N.D. Ill. 2022)

Plaintiff sues, based on the disparity between the box size of rice pilaf and the amount of product. The empty space is known as “slack fill.”

Defendant notes that the box clearly identifies the weight and number of servings.

Plaintiff cites Benson v. Fannie May Confections Brands, Inc., 944 F.3d 639 (7th Cir. 2019) for the proposition that the presence of an accurate net weight statement does not eliminate the misbranding that occurs when a container is made, formed, or filled so as to be misleading.”

However, the court notes:

Benson involved boxed, ready-to-eat chocolates. As the court explained, a consumer might reasonably expect to be able to estimate the approximate number of chocolates in a particular box based on the box size . . . But any reasonable consumer surely knows that rice pilaf sold in a box must be cooked in water or another liquid prior to consumption, and understands further that the cooking process will cause the rice to expand in volume. In other words, a reasonable consumer expects the size of the box to bear only a loose relationship to the amount of cooked product its contents will yield. Accordingly, a shopper uncertain about how many boxes of rice pilaf to buy for the family dinner would know not to rely on the size of the box and would look for additional information of precisely the kind plaintiff admits defendant’s rice pilaf box contains: the number of servings each box will produce based on a specified serving size. Because that information dispels any tendency to mislead that the box size alone might create, there is no deception as a matter of law.

Text of Jacobs v Whole Foods: nd ill rice pilaf

Brothers and Sisters in Christ v. Zazzle, Inc., No. 21-1917 (8th Cir. 2022)

From Justia:

Brothers and Sisters in Christ, LLC (BASIC) allege that Zazzle, Inc. sold a t-shirt that infringed on BASIC’s federal trademark. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction. The Eighth Circuit affirmed. The court explained that BASIC bears the burden of establishing a prima facie showing of jurisdiction. Further, where the applicable federal statute, here the Lanham Act, does not authorize nationwide personal jurisdiction the existence of personal jurisdiction depends on the long-arm statute of the forum state and the federal Due Process Clause.

Here, the court looked to Zazzle’s contacts with Missouri related to BASIC’s claims. Aside from the single t-shirt sale, BASIC fails to allege a connection between Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not allege that Zazzle’s other activities in Missouri involved trademark infringement or that Zazzle sold additional trademark-infringing goods into the state. Further, BASIC has not alleged that Zazzle took such purposeful, targeted action toward Missouri or Missouri consumers. Although Missouri has an interest in this litigation because the allegedly injured plaintiff is a Missouri company, the convenience of the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri and BASIC would likely be inconvenienced in an alternate forum. In sum, BASIC has failed to allege that Zazzle could reasonably anticipate being haled into court in Missouri.

Text of decision in Brothers and Sisters in Christ v Zazzle (8th Cir 2022)”
specific jurisdiction missouri eight circuit

File this next to last month’s RISE case in the Second Circuit, under “Brands with strong housemarks defeat reverse confusion claims.”

But see the 11th Circuit Amazon FYRE case.

Text of Align Activation v LuluLemon Athletica, 21-55775 (Ninth Cir. August 9, 2022):

align lululemon ninth circuit

RISE for nitro-brewed canned coffee against MTN DEW RISE for energy drink. 2d Circuit held that District Court made a significant error in holding that RISE was inherently string and had acquired strength.

Text of Second Circuit decision in RiseandShine v Pepsi:

riseandshine v pepsi 2d cir re RISE

BBK Tobacco & Foods LLP, Plaintiff, v. Central Coast Agriculture Incorporated, et al., Defendants, No. CV-19-05216-PHX-MTL (07/19/2022)

Defendant’s motion for summary judgment granted. Def. uses RAW GARDEN for cannabis extracts, plaintiff sells tobacco and rolling paper under the RAW mark.

Comprehensive discussion of admissibility of testimony from various types of experts, including discussion of SQUIRT v EVEREADY surveys.

Comprehensive discussion of Ninth Circuit Sleekcraft factors.

“In the instant case, five factors favor CCA, including the weighty similarity of the marks, strength of the mark, and evidence of actual confusion factors. One factor, the degree of care exercised by consumers, is neutral, while only two factors, the proximity of the parties’ goods and marketing channels used, favor BBK. See Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005) (concluding that “[t]he distribution of the Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion” where only two factors weighed in plaintiff’s favor); see also M2 Software, 421 F.3d at 1081–83, 1085 (affirming grant of summary judgment when strength of the mark, similarity of the mark, and proximity of the goods factors all favored plaintiff because the others favored defendant). Given the obvious and significant differences between the parties’ marks, the absence of actual confusion, and the low net confusion rates generated by the parties’ surveys, the Court concludes that no reasonable jury could find for BBK on the likelihood of confusion issue. See Cohn, 281 F.3d at 842 (affirming grant of summary judgment where plaintiff’s “evidence fail[ed] to create a genuine issue that confusion is probable, not simply a possibility”); see also Brookfield Commc’ns, 174 F.3d at 1054 (“Where the two marks are entirely dissimilar, there is no likelihood of confusion.”); Collins v. U.S. Dep’t of Veterans Affs., 497 F. Supp. 3d 885, 900 (S.D. Cal. 2020) (“Plaintiffs have failed to demonstrate a triable issue of material fact as to a necessary element of their trademark infringement claims.”).”

Text of decision in BBK v Central Coast Agriculture: D Arizona SJ RAW GARDEN 2_19-cv-05216-MTL_443_PRIMARY DOCUMENT

MATTEL, INC. v. WWW.FISHER-PRICE.ONLINE, No. 1:2021cv09608 (S.D.N.Y. 2022) (Liman, J.)

Mattel wins default judgment over unknown Chinese cyber-squatter/counterfeiter.

Personal jurisdiction established through attempt at trap-buy.

TRO had been entered against financial institution, permanent asset freeze entered against institutions in active cooperation with defendant’s operation of the website.

Text of decision in Mattel v Fisher-Price.Online: mattel fisher price online default sdny

Russett v. Kellogg Sales Company, No. 7:2021cv08572 – Document 19 (S.D.N.Y. 2022)

Motion to Dismiss all causes, including N.Y. G.B.L. §§ 349 and 350 and related state torts granted:

“The photograph of the fresh half strawberry on the Product’s front label must be viewed in context. No reasonable consumer would see the entire product label, reading the words “Pop-Tarts Whole Grain Frosted Strawberry” alongside a frosted strawberry pop-tart with sprinkles, and reasonably expect that fresh strawberries would be the sole ingredient in the Product.”

Text of decision in Russett v. Kellogg Sales Company:

russett v kellogg sdny MtD strawberry pop tart

From the decision: Defendants’ Motion to Dismiss Plaintiff’s Complaint. filed by BET Productions IV, LLC, ViacomCBS Inc., Black Entertainment Television LLC. For the foregoing reasons, Defendant s’ motion to dismiss is GRANTED IN PART and DENIED IN PART. Plaintiff has adequately stated a claim for copyright infringement and may thus pursue discovery on this claim. Plaintiff has not, however, stated a claim for breach of implied contract. Additionally, the Court dismisses Plaintiff’s quantum meruit and unjust enrichment claims as preempted by federal law. Defendants are directed to file an answer to the Complaint on or before July 11, 2022.

Text of decision in Walkie Check v Viacom, 1:2021cv01214:

walkie check v viacom copyright 12b6 house party

SDNY: Judge Rakoff applies Rogers test to METABIRKIN NFTs. Plaintiff sufficiently pled that use of BIRKINS mark in relation to digital images of MetaBirkins likely clears “artistic relevance” prong. However, Hermes sufficiently pled that defendant’s use may have been explicitly misleading. For example, defendant had referred to the reputation of the BIRKINS mark and his desire to create a metaverse equivalent.

metabirkins decision mtd