United States District Court, E.D. Virginia, Alexandria Division
M. HILTON, UNITED STATES DISTRICT JUDGE
MATTER comes before the Court on Defendants' Motion for
Summary Judgment and Plaintiffs' Motion for Partial
case arises from a claim for trademark infringement brought
by Plaintiffs Mars, Incorporated and Mars Petcare US, Inc.
(collectively, "Mars") against Defendants The J.M.
Smucker Company and Big Heart Pet, Inc. (collectively,
"Smucker"). Both parties manufacture their own line
of special dog treats designed for pet owners to hide
medication for administration to their pets. Mars produces
Pill Pockets, a product sold under Mars's GREENIES brand.
The name Pill Pockets is a registered trademark of Mars.
Smucker, conversely, produces Pill Pouches under its
MILK-BONE brand. Smucker does not have a registered trademark
for the term "pill pouches, " but instead claims to
use the term merely as a description of the product's
purpose and characteristics.
filed its complaint on November 21, 2016, asserting three
claims: trademark infringement under the Lanham Act; false
designation of origin, false description, and unfair
competition under the Lanham Act; and common law trademark
infringement and unfair competition. On February 3, 2017,
Smucker filed an answer to the complaint and asserted three
counterclaims against Mars. First, Smucker seeks a
declaration that its use of the term "pill pouches"
is a non-trademark use. Second, Smucker seeks a declaration
that it has not infringed Mars's trademark rights.
Finally, Smucker requests that this Court cancel Mars's
registered Pill Pockets trademark on the grounds that the
trademark has become a generic, descriptive name for this
type of product.
filed a Motion for Summary Judgment on April 10, 2017, which
was initially argued on May 31, 2017, and continued at that
time until close of discovery. On July 18, 2017, after
discovery, Smucker filed a supplemental brief for its Motion
for Summary Judgment, and Mars filed its own Motion for
Partial Summary Judgment as to Smucker's cancellation
counterclaim on August 3, 2017. Oral arguments for both
motions were heard on August 25, 2017.
Federal Rule of Civil Procedure 56, a court should grant
summary judgment if the pleadings and evidence show that
there is no genuine dispute as to any material fact and that
the moving party is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett,
477 U.S. 317, 322 (1986). In reviewing a motion for summary
judgment, the court views the facts in the light most
favorable to the non-moving party. See Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Once a
motion for summary judgment is properly made, the opposing
party has the burden to show that a genuine dispute of
material fact exists. See Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). The
Court finds there is no genuine dispute of material fact and
this case is ripe for summary judgment.
Lanham Act requires plaintiffs to satisfy a two-prong test to
prevail on a trademark infringement or unfair competition
claim. See 15 U.S.C. §§ 1114(1), 1125; U.S.
Search, LLC v. U.S. Search.com Inc., 300 F.3d
517, 523 (4th Cir. 2002). The plaintiff must "first and
most fundamentally prove that it has a valid and protectable
mark, " and second, it must "show that the
defendant's use of an identical or similar mark is likely
to cause confusion among consumers." U.S.
Search, 300 F.3d at 523 (quoting MicroStrategy Inc.
v. Motorola, Inc., 245 F.3d 335, 341 (4th Cir. 2001}).
The test for common law trademark infringement and unfair
competition under Virginia law is "essentially the
same" as the test under the Lanham Act. Lone Star
Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 4 3
F.3d 922, 930 n.10 (4th Cir. 1995) (noting that "both
address the likelihood of confusion as to the source of the
goods or services involved.").
has met the first prong of this test: it owns two federal
trademark registrations for the Pill Pockets mark. However,
Mars has failed to submit any evidence that there is any
likelihood of confusion in the marketplace.
determining whether a likelihood of confusion exists, the
Fourth Circuit has identified nine factors to be considered:
(1) the distinctiveness of the senior mark;
(2) the similarity of the two marks;
(3) the similarity of the goods or services that the marks
(4) the similarity of the facilities employed by the parties