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Mars, Inc. v. The J.M. Smucker Co.

United States District Court, E.D. Virginia, Alexandria Division

September 27, 2017

MARS, INCORPORATED, et al., Plaintiffs,
v.
THE J.M. SMUCKER COMPANY, et al., Defendants.

          MEMORANDUM OPINION

          CLAUDE M. HILTON, UNITED STATES DISTRICT JUDGE

         THIS MATTER comes before the Court on Defendants' Motion for Summary Judgment and Plaintiffs' Motion for Partial Summary Judgment.

         This 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.

         Mars 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.

         Smucker 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.

         Under 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.

         The 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.").

         Mars 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.

         In 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 identify;
(4) the similarity of the facilities employed by the parties to ...

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