Amy's Ice Creams, Inc. v. Amy's Kitchen, Inc.
60 F. Supp. 3d 738
W.D. Tex.2014Background
- AIC sues AK over use of the non-dairy frozen dessert marketed as non-dairy ice cream.
- AK has long sold frozen foods and holds multiple federal registrations for AMY’S and AMY’S KITCHEN.
- AIC asserted claims including trademark infringement, unfair competition, dilution, unjust enrichment, and registration-related relief.
- AK moved for summary judgment on several grounds and moved to exclude certain evidence; AIC cross-moved for partial summary judgment.
- Disputes center on laches, jurisdiction over pending applications, dilution scope, and the admissibility of damages theories and expert testimony.
- The court planned trial in April 2015 and issued rulings on these motions in this order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether laches bars AIC’s claims against AK’s non-dairy dessert | AIC argues progressive encroachment tolls laches for new market expansions | AK contends decades-long delay and encroachment justify laches | Denied laches-based summary judgment; dispute remains fact-intensive |
| Whether the court has jurisdiction to adjudicate pending registration applications | AIC seeks declaratory judgment on registration rights | AK asserts no nexus to pending applications and registrations are incontestable | Denied; court finds nexus and jurisdiction to determine registration rights |
| Federal Dilution Act scope to bar state dilution claims | AK should be barred only for uses described in its registrations | AK claims broader bar to all dilution claims | Denied; limit the bar to uses described in registrations; state dilution claims remain possible |
| Whether AK is entitled to summary judgment on unjust enrichment | Unjust enrichment supports recovery for AK’s benefit | No independent unjust enrichment theory applicable; possible fraud/undue advantage not shown | Granted; unjust enrichment claim dismissed without prejudice |
| Whether to exclude late-disclosed lost royalty damages and related testimony | Loss-royalty theory was timely or should be admitted as rebuttal | Late disclosure prejudicial and improper expert | Carried; denied exclusion at this stage; limited discovery allowed; deposition timelines set |
Key Cases Cited
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010) (trademark infringement/unfair competition standard and secondary meaning discussion)
- Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (likelihood of confusion factors and inherent distinctiveness)
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (likelihood of confusion requires probability, not mere possibility)
- Exxon Mobil Corp. v. FX Networks, LLC, 2014 WL 4100412 (S.D. Tex. 2014) (unpublished; discussed dilution, nexus with registrations)
- Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574 (U.S. 1986) (summary judgment standard; no credibility weighing)
- Anderson v. Liberty Lobby, Inc., 477 F.3d 242 (U.S. 1986) (material facts; genuine disputes)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment burden shifting)
- Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (U.S. 2000) (credibility not weighed on summary judgment)
- Barzingus v. Wilheim, 306 F.3d 17 (10th Cir. 2010) (summary judgment standards akin for motions to compel arbitration)