994 F.3d 466
5th Cir.2021Background
- Dennis Perry created and registered the trademark "METCHUP" for a blended condiment (mayonnaise + ketchup; sometimes mustard) after producing small batches and selling exclusively from the lobby of his nine‑room motel in Lacombe, Louisiana; he owns metchup.com but never sold online.
- Perry’s registration became incontestable after renewal and five years’ standing; documented sales are minimal (about 34 documented sales; ~50–60 bottles produced total).
- Heinz launched a nationwide product called "Mayochup" and ran an online naming contest; a fan-submitted name "Metchup" appeared as a mock‑up bottle on Heinz’s promotional website but Heinz never sold a product labeled "Metchup."
- Perry sued Heinz for trademark infringement, false designation, and related state claims; Heinz counterclaimed to cancel Perry’s registration for abandonment/non‑use.
- The district court granted summary judgment to Heinz, dismissing Perry’s claims for lack of likely consumer confusion and cancelling Perry’s incontestable registration as abandoned; the Fifth Circuit affirmed dismissal of infringement claims but vacated the cancellation and remanded the abandonment counterclaim for factual determination.
Issues
| Issue | Plaintiff's Argument (Perry) | Defendant's Argument (Heinz) | Held |
|---|---|---|---|
| 1. Likelihood of confusion between METCHUP and MAYOCHUP | Names are visually/audibly similar; expert opined typical consumer would be confused | Packaging, marketing channels, and product presentation differ; little or no market overlap; no evidence of actual confusion | No likelihood of confusion; summary judgment for Heinz affirmed |
| 2. Heinz’s fleeting use of "Metchup" in online advertising caused confusion | Use of the exact word on a mock‑up could confuse consumers about source or sponsorship | The mock‑up was ephemeral advertising; Heinz never sold a product labeled METCHUP; no actual confusion shown | No actionable confusion from the advertising; dismissal affirmed |
| 3. Whether Perry abandoned his incontestable METCHUP registration (cancellation) | Perry made bona fide sales and intended to expand; some interstate customers visited motel; incontestable status does not preclude factual inquiry | Use was sporadic, token, and maintenance‑style (domain squatting); registration should be canceled | District court’s summary judgment cancellation vacated; material factual dispute about Perry’s intent (bona fide use vs. token use) requires remand |
| 4. Whether label noncompliance (unlawful use) defeats "use in commerce" | Even minor bona fide sales suffice; unlawful‑use doctrine should not apply to negate "use" | Perry’s labels lacked required food‑labeling information, so his use was unlawful and not "use in commerce" | Court declined to adopt the unlawful‑use doctrine; labeling compliance does not automatically defeat "use" claim on these facts |
Key Cases Cited
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (sets out the likelihood‑of‑confusion multi‑factor test)
- American Rice, Inc. v. Prod. Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008) (discusses incontestable‑mark effect and limits)
- Future Proof Brands, L.L.C. v. Molson Coors Beverage Co., 982 F.3d 280 (5th Cir. 2020) (emphasizes packaging and label differences in confusion analysis)
- Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016) (explains that even minimal interstate effects can satisfy Lanham Act "use in commerce")
- Kentucky Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368 (5th Cir. 1977) (describes heavy burden to prove abandonment and forfeiture nature)
- La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974) (token sales held insufficient to prevent cancellation in defensive registration context)
- Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070 (5th Cir. 1997) (discusses abandonment and "use in commerce" analysis)
- Electro Source, LLC v. Brandess–Kalt–Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006) (minor bona fide use can defeat abandonment defense)
- Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166 (5th Cir. 1986) (incontestable status does not make a weak mark strong)
- Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260 (5th Cir. 1975) (sales are not the sole measure of trademark "use")