Southern Snow Manufacturing Co. v. Snowizard Holdings, Inc.
921 F. Supp. 2d 527
E.D. La.2013Background
- SnoWizard, Inc. and Ronald R. Sciortino moved for summary judgment on duplicative claims in a consolidated multi-case action.
- Plaintiffs include Southern Snow Manufacturing Co., Simeon, Inc., Snow Ingredients, Theodore Eisenmann, Parasol Flavors, Raggs Supply, Special T Ice Co., Plum Street Snoballs, and Van’s Snowballs, active across four related actions.
- Earlier related suits (06-9170, 09-3394, 10-0791) involved SnoWizard’s alleged fraudulent procurement of registrations and false assertions of trademark rights in various marks.
- Judge Zainey partially granted summary judgment in the original cases (04/18/2011 and 04/18/2011) on several marks and unfair-competition theories; TTAB cancelled ORCHID CREAM VANILLA for descriptiveness; Mountain Maple and Snowsweet remained in dispute.
- 11-1499 added six new plaintiffs and asserted new but largely duplicative claims based on SnoWizard’s later trademark registrations and enforcement actions; SnoWizard seeks dismissal to avoid claim-splitting and lack of cognizable injury.
- The court ultimately granted partial summary judgment on duplicative claims while denying some aspects, and granted dismissal with prejudice of certain declaratory-judgment claims regarding Mountain Maple and Snowsweet.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the claims in 11-1499 duplicative of prior actions? | Plaintiffs contend no identical privity or duplicative claims exist. | SnoWizard argues claim-splitting applies due to identical nucleus of facts and privity. | Yes, duplicative claims are dismissed for claim-splitting except Plum Street and Van’s. |
| Are there cognizable injuries supporting the fraudulent procurement claims? | Plaintiffs argue damages and ascertainable losses were or could be shown. | Plaintiffs failed to show cognizable injury or ascertainable loss. | Granted; fraudulent-procurement claims dismissed for lack of cognizable injury or ascertainable loss. |
| Are there grounds to dismiss unfair competition claims? | Plaintiffs rely on false-advertising and misrepresentation theories. | Claims lack evidence of materiality, deception, or tendency to deceive. | Granted; unfair-competition claims dismissed with prejudice. |
| Should declaratory-judgment claims regarding Mountain Maple and Snowsweet be dismissed? | Plaintiffs seek declarations of invalidity/unenforceability. | Presumption of validity for registered marks remains unrebutted. | Granted; claims for invalidity/unenforceability dismissed with prejudice. |
Key Cases Cited
- Friends of the Earth, Inc. v. Crown CentralPetroleum Corp., 95 F.3d 358 (5th Cir. 1996) (claim-splitting and docket-management concerns inform dismissal in related actions)
- Meza v. General Battery Corp., 908 F.2d 1262 (7th Cir. 1990) (privity analysis for successive lawsuits)
- Oliney v. Gardner, 771 F.2d 856 (5th Cir. 1985) (scope of privity/adequate representation for non-parties)
- Pizza Hut, Inc. v. Papa John’s Int'l, Inc., 227 F.3d 489 (5th Cir. 2000) (summary-judgment standard and elements of false-advertising claims)