United States District Court, E.D. Virginia, Alexandria Division
LIAM O'GRADY, District Judge.
On August 28, 2013, Reynolds Consumer Products, Inc. ("Reynolds") filed its Second Amended Complaint against Handi-Foil Corporation ("Handi-Foil"). The Complaint contained eight counts and alleged that Handi-Foil had infringed Reynolds' registered trademarks and its common law trade dress rights in violation of the Lanham Act. Reynolds also accused Handi-Foil of false advertising. In its Answer Handi-Foil asserted two counterclaims seeking (i) cancellation of Reynolds' trademark registrations on the basis of abandonment, and (ii) declaratory judgment of non-infringement.
Currently before the Court are multiple pretrial motions. Both parties have submitted motions for partial summary judgment with respect to Handi-Foil's abandonment counterclaim. Handi-Foil has also moved for partial summary judgment with respect to Reynolds' false advertising claim. The parties have both filed motions to strike the opposing party's expert. Finally, Handi-Foil has moved to strike Reynolds' jury demand.
The Court held argument on the motions-all of which were extensively briefed and vigorously opposed-in open court on January 10, 2014. For the reasons stated below, the Court finds that Reynolds has not abandoned its trademark registrations. Therefore, Reynolds' Motion for Partial Summary Judgment (Dkt. No. 107) is GRANTED. All other motions are DENIED.
Both parties manufacture and market consumer aluminum food storage and cookware products. The cornerstone of Reynolds' business is its Reynolds Wrap aluminum foil, a product sold at remarkably high volumes and found in a strikingly large number of United States households. In the summer of 1977, Reynolds' predecessor applied for, and was granted, two trademark registrations for its Reynolds Wrap package designs. Reynolds currently owns these two registrations, which it now asserts against Handi-Foil in the current action.
Reynolds amended the registrations in 1997. As part of its application to amend the marks, Reynolds submitted a specimen to reflect how the Reynolds Wrap package was currently being used in commerce. The majority of the 1997 specimen is metallic blue, while the far right end of the package is pink. A series of sharp, diagonal silver lines separate the blue and pink areas. On the blue area, the words "Reynolds Wrap" are written in bold silvery-white font. On the pink area, the square footage of the roll foil is prominently written in bold blue font.
Ten years later, in the summer of 2007, Reynolds sought to renew both registrations. In doing so, Reynolds again submitted a specimen to reflect how the Reynolds Wrap package was currently being used in commerce. There is no question that the 1997 and 2007 specimens differ. Both retain the familiar blue, silver, and pink color-pattern. The 2007 specimen, however, used a series of curved silver lines to separate the blue and pink areas. The writing and font on the packages remained largely the same. The United States Patent and Trademark Office ("PTO") accepted the 2007 specimen and renewed both registrations.
Reynolds again altered the Reynolds Wrap box in 2008, a year after the PTO renewed the registrations on the basis of the 2007 specimen. The changes mostly altered the proportions of the blue and pink areas, as well as the proportions of the writing in each area. Additionally, Reynolds added the text "Trusted Since 1947" underneath the Reynolds Wrap logo on the blue side of the box.
For many years the bulk of Handi-Foil's business focused on aluminum baking pans. According to Handi-Foil, Dollar Tree Stores, Inc. ("Dollar Tree") approached Handi-Foil about creating an aluminum roll foil product in 2011. In March of 2012 Handi-Foil began selling aluminum roll foil at Dollar Tree stores. Months later Handi-Foil expanded its production and began offering the foil at retail grocery stores nationwide. As part of its efforts to enter the national retail aluminum roll foil market, Handi-Foil representatives began to pitch Handi-Foil's product as new and comparable to Reynolds Wrap. Reynolds argues that Handi-Foil representatives solicited purchasing agents from over a quarter of the nation's large retail grocery stores with these or similar pitches. These solicitations make up the bulk of Reynolds' false advertisement claim.
I. Cross Motions for Partial Summary Judgment
A. Standard of Review
Summary judgment should be granted where the evidence in the record "show[s] that there is no genuine issue as to any material fact and that the movant is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). As the Supreme Court explained, "this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 411 U.S. 242, 247-48 (1986). A dispute over an issue of material fact is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. Finally, in making ...