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Full Opinion
Case: 20-30418 Document: 00515817174 Page: 1 Date Filed: 04/12/2021
United States Court of Appeals
for the Fifth Circuit United States Court of Appeals
Fifth Circuit
FILED
April 12, 2021
No. 20-30418
Lyle W. Cayce
Clerk
Dennis Perry,
PlaintiffâAppellant,
versus
H. J. Heinz Company Brands, L.L.C.; Kraft Heinz Foods
Company,
DefendantsâAppellees.
Appeal from the United States District Court
for the Eastern District of Louisiana
USDC No. 2:19-CV-280
Before Owen, Chief Judge, and Graves and Ho, Circuit Judges.
James E. Graves, Jr., Circuit Judge:
Mr. Dennis Perry makes Metchup, which depending on the batch is a
blend of either Walmart-brand mayonnaise and ketchup or Walmart-brand
mustard and ketchup. Mr. Perry sells Metchup exclusively from the lobby of
a nine-room motel adjacent to his used-car dealership in Lacombe, Louisiana.
He has registered Metchup as an incontestable trademark. Though he had
big plans for Metchup, sales have been slow. Since 2010, Mr. Perry has
produced only 50 to 60 bottles of Metchup, which resulted in sales of around
$170 and profits of around $50. He owns www.metchup.com but has never
Case: 20-30418 Document: 00515817174 Page: 2 Date Filed: 04/12/2021
No. 20-30418
sold Metchup online. For better or worse, the market is not covered in
Metchup.
Along comes Heinz. It makes Mayochup, which is solely a blend of
mayonnaise and ketchup. To promote Mayochupâs United States launch,
Heinz held an online naming contest where fans proposed names. A fan
submitted Metchup, and Heinz posted a mock-up bottle bearing the name
Metchup on its website alongside mock-up bottles for the other proposed
names. Heinz never sold a product labeled Metchup.
When Mr. Perry discovered Mayochup and Heinzâs use of Metchup
in advertising, he sued Heinz for trademark infringement. The district court
dismissed Mr. Perryâs claims because it found that there was no likelihood of
confusion between Mayochup and Metchup and no confusion caused by
Heinzâs fleeting use of Metchup in advertising. It also canceled Mr. Perryâs
trademark registration after concluding that he had failed to prove that he had
made lawful, non-de minimis use of the Metchup mark in commerce.
We agree that there is little chance that a consumer would confuse Mr.
Perryâs Metchup with Heinzâs Mayochup or be confused by Heinzâs use of
Metchup in advertising, so we affirm the district courtâs dismissal of Mr.
Perryâs claims against Heinz. But because Mr. Perry sold some Metchup and
testified that he hoped to sell more, a finder of fact should determine whether
his incontestable trademark should be deemed abandoned and canceled.
Consequently, we vacate the district courtâs cancelation of Mr. Perryâs
trademark and remand for further proceedings on Heinzâs counterclaim.
I.
Heinz began selling Mayochup in the Middle East in 2016. It decided
to bring this convenient, yet perhaps gratuitous, mixture to the United States
in 2018. To promote its blends of ketchup and ranch (âKranchâ),
mayonnaise and mustard (âMayomustâ), mayonnaise and barbecue sauce
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(âMayocueâ), and mayonnaise and ketchup, it staged a publicity stunt. To
get customers used to the uncanny sauce blends, Heinz turned to the Internet
and asked its fans to propose names for its concoctions.
The promotion was a hit. Heinz received over ninety proposed names
for its mayonnaise and ketchup blend, including Saucy McSauceface, an
apparent nod to Boaty McBoatface, the name the Internet proposed for a
British research ship. 1 But the submissions were not all so fanciful and
included more suggestive names like Metchup. At the end of the campaign,
Heinz posted mock-up bottles bearing the proposed names on its website.
Heinz never sold bottles with Saucy McSauceface or Metchup on them. It
was all for advertising purposes only.
Before posting the mock-up bottles, Heinz had its in-house lawyers
run a trademark search, which turned up a trademark registration for
Metchup. Turns out, Heinz was not the first to grapple with both the problem
of having to contemplate ratios and the inconvenience of having to use two
bottles when preparing a burger.
Mr. Perry, who operates the nine-room Star Hotel and an adjoining
used-car lot in Lacombe, Louisiana, had years ago decided to solve these
issues and share his love of mayonnaise blended with ketchup (and
occasionally mustard) with others. Mr. Perry says he first had the idea to
make a blended sauce called Metchup sometime in 2000. But it took a while
for him to get around to producing it.
In addition to used car sales and motel management, he âdabbled inâ
the buying and selling of domain names. At one time, he owned as many as
1,400 domain names that he hoped to sell for a profit. In 2007, Mr. Perry
purchased the domain names for www.metchup.com and
1
Katie Rogers, Boaty McBoatface: What You Get When You Let the Internet Decide, N.Y.
Times, March 21, 2016, https://www.nytimes.com/2016/03/22/world/europe/boaty-
mcboatface-what-you-get-when-you-let-the-internet-decide.html.
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www.metchup.uk.co and applied to register Metchup as a trademark with the
United States Patent and Trademark Office.
Mr. Perry began making Metchup for public consumption sometime
in 2010 or 2011. He made it by blending Walmart-brand mayonnaise and
ketchup together in his home kitchen, funneling the small batches into plastic
bottles, and labeling them with a printed label. He sold the first bottle of
Metchup to his mother and put the rest up for sale in the lobby of the Star
Motel.
Sales in hand, Mr. Perry submitted a photograph to the PTO, which
then issued him a trademark registration for the name Metchup in 2011. He
renewed the trademark registration in 2017 (submitting the same photo he
submitted in his first application), and the PTO declared the mark
incontestable in 2018.
Mr. Perry had high hopes for Metchup, writing in one notebook that
he wanted to sell two million bottles, but Metchup was neither an online
sensation nor a brick-and-mortar success. Over the years, Mr. Perry has sold
only small quantities of Metchup exclusively at the Star Motel. Though Mr.
Perry sold Metchup to motel guests traveling through âfrom all over the
place,â he has only thirty-four documented sales. And while he insists he sold
a few more bottles than that, any dispute over sales figures is immaterial
because he has made at most nine or ten six-bottle batches of Metchup. He
thought about contacting a bottle producer to expand his operation but never
did.
While Mr. Perry owned metchup.com, he never sold Metchup online.
The domain name linked to a Facebook page with pictures of Metchup
bottles on it, but there was no way to purchase Metchup through the page
and no clear indication that Metchup was actually for sale. There were so few
signs that a product called Metchup was for sale that one could see how
Heinzâs in-house trademark research team found Mr. Perryâs registration but
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concluded that the trademark was not in use. The markets were not exactly
covered in Metchup.
After the naming contest and the mock-up Metchup bottle, Heinz
released Mayochup for sale in the United States. Mr. Perryâs son-in-law
discovered Mayochup at the grocery and let Mr. Perry know. Mr. Perry then
went online and discovered that not only had Heinz released its own
mayonnaise and ketchup blend but that it had also used the name Metchup
in its promotional efforts.
Mr. Perry hired a lawyer and sued Heinz for trademark infringement,
trademark counterfeiting, false designation of origin, and for violations of
various Louisiana trademark laws. Heinz filed a counterclaim to have Mr.
Perryâs Metchup trademark registration canceled for abandonment or non-
use.
After speaking with counsel, Mr. Perry sent samples of Metchup to
national grocery chains in Florida and a store in New Orleans in hopes of
expanding Metchupâs market footprint. But Mr. Perry never heard anything
back. His lawsuit against Heinz fared no better than his expansion efforts.
After discovery, Heinz filed a motion for summary judgment. The district
court granted the motion in full and dismissed all of Mr. Perryâs claims and
canceled his trademark registration for Metchup because it deemed the
trademark abandoned.
II.
The panel reviews the grant of summary judgment de novo. Xtreme
Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009). All of
Mr. Perryâs claims require him to show ownership of a valid trademark and
that Heinz used the mark or a similar mark in a way that created a likelihood
of confusion. Id. at 226â27; 15 U.S.C. §§ 1114(1)(a)-(b), 1116(d), 1117;
1125(a); La. Rev. Stat. § 51:222, 222.1.
Under the Lanham Act, Mr. Perryâs certificate of registration for his
Metchup trademark is prima facie evidence of its validity.
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15 U.S.C. §§ 1057(b), 1115(a). The PTO found that Mr. Perryâs Metchup
mark had achieved incontestable status because it had been registered and
used in commerce for over five years. 15 U.S.C. § 1065; see also American Rice,
Inc. v. Prod. Rice Mill, Inc., 518 F.3d 321, 330 (5th Cir. 2008). Once a mark
becomes incontestable, its federal registration constitutes conclusive evidence
of its validity, subject only to the defenses enumerated in section 1115 of the
Lanham Act, which includes the defense of abandonment. 15 U.S.C. §
1115(a); § 1115(b)(2), § 1065(4) (emphasis added). See also American Rice, 518
F.3d at 330.
Mr. Perry has conclusive evidence that he owns a valid trademark and
has shown that Heinz has used both the Metchup trademark and the
Mayochup name in commerce. Heinz after all used the Metchup mark in
conjunction with its advertising campaign and sells Mayochup, an ostensibly
similar product, in groceries nationwide. So we set the issues of ownership,
use, and abandonment aside for a moment to first address whether Heinz
used the Metchup trademark and Mayochup name in a way that likely
confused consumers as to the source, sponsorship, or affiliation of the
blended sauces at issue. Xtreme Lashes, 576 F.3d at 226. âLikelihood of
confusionâ requires more than a mere possibility; Mr. Perry must show a
probability of confusion. Id.
When deciding whether the use was confusing, courts rely on a non-
exhaustive set of factors called digits of confusion, which include: (1) the type
of trademark, (2) mark similarity, (3) product similarity, (4) outlet and
purchaser identity, (5) advertising media identity, (6) defendantâs intent, (7)
care exercised by potential purchasers, and (8) actual confusion. Id. at 227.
A few factors weigh in Mr. Perryâs favor. Setting aside production
methods, the products are similar. Selling for around $5.00 per bottle, both
are inexpensive. The low price perhaps suggests that potential purchasers are
less likely to exercise care when buying. But then again, people are discerning
with regard to condiments and resolute in their preferences (e.g., Heinz
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ketchup versus Huntâs ketchup). Lastly, Heinz used the exact word Metchup
on a mock-up bottle in online advertising.
But trademarked words cannot be isolated from the labels on which
they appear, and these labels and bottles look nothing alike.
Sun-Maid Raisin Growers of Cal v. Sunaid Food Prods., Inc., 356 F.2d 467, 469
(5th Cir. 1966); see also Future Proof Brands, L.L.C. v. Molson Coors Beverage
Co., 982 F.3d 280, 287â88 (5th Cir. 2020) (noting differences in packaging).
The productsâ distinguishable packaging mitigates against Heinzâs use of the
word Metchup because the packaging differences make confusion less likely.
The type of mark weighs in Heinzâs favor. Trademarks are evaluated
on a spectrum. Descriptive and suggestive marks are considered weaker than
marks that are arbitrary and fanciful, which are marks that bear almost no
relationship to the products to which they are applied (e.g., Saucy
McSauceface). Future Proof Brands, 982 F.3d at 289â292 (comparing types
of trademarks). Metchup is a suggestive trademark because while it requires
a little imagination to draw a conclusion about the goods, the mash-up of a
name relates to the names of the two sauces that form the blend. See id. at
291.
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Both Mr. Perry and Heinz are selling to potential condiment
purchasers. But they have to date targeted different segments of this market.
Mr. Perry has limited his sales efforts to the travelers staying at his nine-room
motel in Lacombe, Louisiana, and to visitors to his used car lot. The small
motel and the adjoining used car lot are not the first place condiment
purchasers go for ketchup and mayonnaise in any form. Moreover, Mr. Perry
has neither sold Metchup online nor shipped orders of Metchup. He has
made only minimal efforts to expand his distribution. And when he did
attempt to expand, his efforts involved, not approaching local restaurants,
stores, or farmerâs markets, but sending unsolicited samples to national
grocery chains in Florida and a hot sauce store in New Orleans.
Mr. Perry markets his products to the guests at his nine-room motel,
Heinz to the shoppers at most every grocery and to online customers through
an extensive web store. Sensibly speaking, Mr. Perry has no presence in
Heinzâs market and Heinz no presence in his. This is not to say that Mr.
Perry would not have trademark rights should he choose to expand. It is,
however, saying that as the products were situated at the time Heinz used the
name Metchup on a mock-up label, and as Heinzâs Mayochup currently
stands in relationship to Mr. Perryâs Metchup, there was, and is, no market
overlap.
Mr. Perry does not buy print ads, issue coupons, enter his sauce into
contests, or advertise Metchup on signage. Mr. Perry, however, contends
that both he and Heinz marketed their products on the Internet. True, but
Mr. Perryâs online presence was limited to a Facebook page with pictures of
Metchup bottles on it. Unlike Heinz, he has never used the Internet for sales
or large-scale advertising. While Heinz knew Mr. Perry had registered the
Metchup mark, the lack of advertising and established market goodwill makes
it easy to see how it concluded that the mark was no longer in use. So, the
digits of outlet and purchaser identity, advertising media identity, and
defendantâs intent all weigh in favor of Heinz.
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Finally, there is the question of actual confusion. While it need not be
proven, actual confusion is âthe best evidence of a likelihood of confusion.â
Xtreme Lashes, 576 F.3d at 229. The district court relied almost exclusively
on the lack of actual confusion when it dismissed Mr. Perryâs claims. Indeed,
nothing in the record shows that any consumer actually got confused by
Heinzâs use of Metchup on a mock-up bottle or confused Heinzâs Mayochup
with Mr. Perryâs Metchup. After all, Heinz never sold a product named
Metchup and there is no evidence that Heinzâs Mayochup and Mr. Perryâs
Metchup have ever competed for sales.
Mr. Perry introduced expert testimony from Dr. Lucy L. Henke, a
marketing professor with a doctorate in communication studies. She said that
the typical consumer would confuse Mayochup and Metchup due to visual
and auditory similarities between the two names. Dr. Henke pointed out that
the words only differ by three letters and noted that Twitter users asked
Heinz about the pronunciation of Mayochup, âIs it pronounced May-o-chup
or Metchup?â
But asking questions about pronunciation does not show that the
Twitter users were actually confusing Heinzâs Mayochup with Mr. Perryâs
Metchup. Confusion about how to pronounce the productâs name does not
show actual confusion as to its source, sponsorship, or affiliation.
More importantly, Dr. Henke neither presented consumer survey
data nor provided an analysis of such data. Her testimony amounts to her
personal opinion on the topic of actual confusion and does not address
evidence where potential consumers were asked to offer their opinions or
tested to see if they actually got, or were, confused by either Heinzâs use of
the name Metchup in advertising or by it selling Mayochup. Thus, Dr.
Henkeâs testimony provides no evidence of actual confusion.
âIncontestable status does not make a weak mark strong.â Oreck Corp.
v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986). Mr. Perryâs
incontestable mark means that he has rights to use the mark nationwide, but
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it does not automatically mean that anotherâs use of the mark constitutes
infringement. This is not a strict liability situation, and in the end, Mr.
Perryâs Metchup mark is simply too weak for there to be a likelihood of
confusion on these facts.
It would be a coincidence to ever encounter both Mayochup and
Metchup in the market, much less get confused about the affiliation,
sponsorship, or origin of the two products. Accordingly, no reasonable jury
could conclude that Heinzâs use of Metchup in advertising or the sale of its
own product, Mayochup, created a likelihood of confusion. We therefore
affirm the district courtâs decision to dismiss Mr. Perryâs claims against
Heinz.
III.
While the lack of a probability of confusion spoils all of Mr. Perryâs
claims, it does not have the same ruinous effect on Mr. Perryâs ownership of
the Metchup trademark. The district court granted summary judgement on
Heinzâs counterclaim for trademark cancelation because it found that Mr.
Perry had, as a matter of law, abandoned his incontestable trademark for
Metchup.
Abandonment may be a defense even against a party possessing an
incontestable mark. 15 U.S.C. § 1115(b)(2). But a party claiming that a
trademark has been intentionally abandoned bears a heavy burden. Kentucky
Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 387 (5th Cir.
1977) (citing American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619, 625 (5th
Cir. 1963)). âAbandonment is in the nature of a forfeitureâ and requires
satisfying the âburden of strict proof applicable in forfeiture cases.â
American Foods, 312 F.2d at 624â25. Courts have equated the requirement
for strict proof to the burden of providing clear and convincing evidence. 3 J.
Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 17:12 (5th ed. 2021).
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The Lanham Act provides that â[a] mark shall be deemed to be
âabandonedâ . . . [w]hen its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from the
circumstances. Nonuse for 3 consecutive years shall be prima facie evidence
of abandonment.â 15 U.S.C. § 1127; see also Exxon Corp. v. Oxxford Clothes,
Inc., 109 F.3d 1070, 1078â79 (5th Cir. 1997). âUseâ for purposes of the
Lanham Act equates to âuse in commerce.â See 15 U.S.C. § 1127. The act
further defines âuseâ as âthe bona fide use of such mark made in the
ordinary course of trade, and not made merely to reserve a right in a
mark.â Id. Section 1127 appears to impose two requirementsâuse in
commerce and bona fide use or use not merely to reserve a right.
The district court first found that Mr. Perry had abandoned his
trademark because â[he] [ ] failed to produce any evidence to show any sales
of METCHUP-branded products outside of Louisiana or to non-Louisiana
residents.â But this conclusion that Mr. Perry never used his mark in
commerce because he cannot prove sales outside of Louisiana conflicts with
recent Commerce Clause jurisprudence and misplaces the burden of proof.
âBecause one need not direct goods across state lines for Congress to
regulate the activity under the Commerce Clause, there is likewise no such
per se condition for satisfying the Lanham Actâs âuse in commerceâ
requirement.â Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986,
995 (Fed. Cir. 2016). In Christian Faith Fellowship, the Trademark Trial and
Appeal Board concluded that two sales totaling $38 to two out-of-state
residents were de minimis and therefore not sales in commerce. Id. at 987â88.
The Federal Circuit overturned the decision. Id. A brief study of modern
Commerce Clause cases reveals that seemingly de minimis intrastate
activities can influence interstate commerce, be regulated by Congress, and
thus count as uses in commerce for purposes of the Lanham Act. See id. at
991â92 (citing Gonzales v. Raich, 545 U.S. 1, 6â8 (2005)).
But what may be most concerning is that the district court misplaced
the burden of proof. Mr. Perry testified that he sold Metchup to motel guests
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who come from âall over the place.â Heinz has the burden to prove
otherwise by presenting strict proof, and it has neither put forth evidence that
discredits Mr. Perryâs testimony nor has it shown why the reasoning from
Christian Faith Fellowship would fail to apply here.
The district courtâs flawed use-in-commerce reasoning and the
misplacement of the burden of proof are not the only obstacles preventing us
from affirming its grant of summary judgment on Heinzâs counterclaim. The
district court also reasoned that Mr. Perry had failed to make âlawful, non-
de minimis useâ of the Metchup mark. Heinz insists that Mr. Perryâs use was
unlawful because he failed to comply with state and federal food labelling
regulations when he omitted required information from the Metchup labels.
But this court has not adopted the unlawful use doctrineâthe doctrine that
failing to abide by all laws and regulations can turn what would otherwise
constitute âuseâ into ânon-use.â See FN Herstal SA v. Clyde Armory Inc.,
838 F.3d 1071, 1086â88 (11th Cir. 2016) (discussing the history and
application of the unlawful use doctrine); see also 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair
Competition § 17:12 (5th ed. 2021). We see no reason to adopt the
doctrine here.
Abandonment generally requires a complete discontinuance of the
trademarkâs use and even minor or sporadic good faith uses of a mark will
defeat the defense of abandonment. Electro Source, LLC v. BrandessâKaltâ
Aetna Group, Inc., 458 F.3d 931, 938 (9th Cir. 2006) (âEven a single instance
of use is sufficient against a claim of abandonment of a mark if such use is
made in good faith.â) (internal citation omitted). See also NetJets Inc. v.
IntelliJet Grp., LLC, 602 F. Appâx 242, 245â46 (6th Cir. 2015) (concluding
that reasonable jury could find two sales of software license bona fide use);
Cumulus Media, Inc. v. Clear Channel Communs., Inc., 304 F.3d 1167, 1173â74
(11th Cir. 2002) (â[E]vidence of [the ownerâs] use of [the mark] . . . was
limited, consisting largely of a logo on a billboard, some business cards, and a
few promotional materials, but it was sufficient to enable the trial court to
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reject [the defendantâs] abandonment defense.â). But see Emergency One, Inc.
v. American FireEagle, Ltd., 228 F.3d 531 (4th Cir. 2000) (âOne recycled
American Eagle truck with an AMERICAN EAGLE nameplate over the
course of three years is no more than token use which, standing alone, is
legally insufficient to disprove abandonment.â).
Heinz cannot show that Mr. Perry abandoned the mark due to
complete nonuse. True, Mr. Perry neither sold (only 34 documented sales)
nor made (only 60 bottles produced) much Metchup. And we did find in
Exxon Corp. v. Humble Exploration Co., Inc., 965 F.2d 96 (5th Cir. 1983), that
seemingly similar sporadic and de minimis use could serve as grounds for
registration cancellation.
But Humble addressed what could be called de minimis use in the
context of a trademark maintenance program where Exxon made only token
or sporadic use of its retired Humble Oil name to reserve rights to the
trademark. 965 F.2d at 99â101. For example, Exxon packaged products
adorned with both Exxon and Humble labels and shipped the goods to
customers. Id. Humble built upon an earlier Second Circuit decision where
the court found that token defensive use was insufficient to obtain
enforceable rights in a trademark. La Societe Anonyme des Parfums le Galion v.
Jean Patou, Inc., 495 F.2d 1265, 1273â74 (2d Cir. 1974). In Le Galion, Jean
Patou had registered a trademark in the United States and sold a small
amount of perfume under the trademarked name to keep Le Galion from
selling a competing product. Id. at 1274.
Humble and Le Galion concern behavior that the Lanham Act
specifically prohibits. In fact, the Seventh Circuit has cabined cases like Le
Galion and Humble to situations involving a trademark maintenance program
or defensive trademark use, implying that de minimis sales and use alone are
insufficient to show abandonment. See S.C. Johnson & Son, Inc. v.
Nutraceutical Corp., 835 F.3d 660, 668â70 (7th Cir. 2016). Again, the
Lanham Actâs framework imposes two requirementsâuse in commerce and
bona fide use or use not merely to reserve a right.
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These requirements have nothing to do with a threshold use or sales
requirement, nor do they imply that trademark rights, however weak, will
vanish if sales are slow. In fact, sales are ânot the sine qua non of trademark
use.â Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1267 (5th Cir.
1975). So, considering the Lanham Actâs requirements and the more
prevalent view that even minor good-faith use can forestall abandonment, de
minimis sales and sporadic use alone are not enough to warrant a conclusion
that Mr. Perry has not made âuseâ of the mark in a way that qualifies as
âuseâ under the Lanham Act.
That said, Heinz has created an issue of fact as to whether Mr. Perryâs
use of the Metchup mark was bona fide use or whether he was simply making
sporadic use of the mark to maintain his trademark rights. Mr. Perry has a
history of acquiring domain names with no intention of using them and with
hopes of selling them for a profit. This âdomain squattingâ is akin to a
trademark maintenance program. And evidence suggests that Mr. Perry
might have been doing something similar with the Metchup trademark.
Mr. Perry made next to no effort to grow the sales of Metchup. He
never registered his trademark in Louisiana, never attempted to sell Metchup
in local stores, restaurants, or farmerâs markets; never attempted to increase
production or improve packaging; and never attempted to sell the product
online or advertise where the product could be purchased online. His only
attempts to get Metchup into stores came when he sent unsolicited samples
to national groceries and to a store in New Orleans after he found out Heinz
was selling a similar product and had used the name Metchup in its
marketing. At the time of his deposition, Mr. Perry had no Metchup on hand.
Thus a reasonable jury could infer that Mr. Perryâs registration and use of
the trademark was something other than a sincere, good-faith business effort
and something more like a trap that Heinz unwittingly fell into.
But if that inference is to be made, it should be made by a finder of fact
because âsummary judgment is rarely proper when an issue of intent is
involved.â Guillory v. Domtar Indus. Inc. v. John Deere Co., 95 F.3d 1320, 1326
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(5th Cir. 1996). Heinz has a heavy burden, and the absence of definitive proof
of a trademark maintenance program like the one in Humble requires an
examination of Mr. Perryâs intent and credibility to determine whether his
use of the Metchup mark was bona fide use. After all, Mr. Perry had hoped
to sell millions of bottles and testified that he contemplated expanding
production and improving packaging. Consequently, his efforts could also be
seen as a foundering business venture rather than a trademark trap. We
therefore vacate the district courtâs grant of summary judgment on Heinzâs
cancelation counterclaim and remand the case to the district court for further
proceedings to address whether Mr. Perry made bona fide use of the
Metchup mark.
IV.
We AFFIRM in part and VACATE in part and REMAND for
further proceedings on Heinzâs counterclaim and the issue of abandonment.
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