MEMORANDUM
This matter was tried before the Court without a jury on August 28 and 29, 2002, on the plaintiffs claims for federal trademark violations under authority of 15 U.S.C. §§ 1114, 1125(a) and 1125(c), analogous state law claims under the Tennessee Consumer Protection Act, Tenn.Code Ann. § 47-18-104, and state common law prohibitions on trademark infringement and unfair competition. The plaintiff sought a recovery of the defendant’s proceeds from the use of the plaintiffs trademark, in addition to punitive damages and equitable relief. The Court’s jurisdiction is undisputed.
The plaintiffs federal cause of action, based upon alleged trademark infringements, is brought under the Lanham Act, which provides in pertinent part as follows:
(1) Any person who shall, without the consent of the registrant -
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ...shall be liable in a civil action by the registrant for the remedies hereinafter provided.
15 U.S.C. § 1114(1). The Act goes on to provide that:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person,
* * * * * *
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a). The Court is empowered to issue injunctions to prevent violations of either subsection. 15 U.S.C. § 1116(a). Further, the Act addresses the dilution of famous marks as follows:
(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.
15 U.S.C. § 1125(c).
For the reasons set forth below, the Court finds in favor of the plaintiff only with respect to the issuance of an injunction against any and all future use by the defendant of the marks “Johnny’s” and “Johnny’s Gourmet.” In all other aspects the Court finds in favor of the defendant.
I. FINDINGS OF FACT
The plaintiff corporation sells barbecue and other seasonings and salts, marinades and mustards under the federally registered trademark names “JOHNNY’S” and “JOHNNY’S LITE,” which it owns and has used since at least 1959 and 1984, respectively. 1 The defendant corporation is wholly owned by Mr. Johnny Fleeman, and sells steak sauce and marinades, barbecue sauce, cocktail sauce and salad dressings. In or about October 1992, the defendant began selling steak seasoning and marinade labeled as “JOHNNY’S” out of Mr. Fleeman’s restaurant in Lawrence-burg, Tennessee, The Brass Lantern. In 1993 the defendant began distributing “Johnny’s Steak Seasoning and Marinade” in grocery stores in Tennessee and Alabama, and in or around 1996 expanded into Georgia, South Carolina and Arkansas.
In July 1997, Mr. John Meaker, then the president of the plaintiffs predecessor corporation, contacted Mr. Fleeman to notify him of attempts to redeem the defendant’s coupons with the plaintiff corporation. Mr. Meaker pointed out that the plaintiff owned the “JOHNNY’S” trademark and that there was “confusion as to the name, JOHNNY’S.” (Plaintiffs Exhibit 21). In a second letter dated August
The plaintiff and defendant had no further contact until March 2001, 3 when counsel for the plaintiff wrote Mr. Fleeman and informed him that the defendant’s use of the “JOHNNY’S” mark on identical product lines constituted a violation of the Lan-ham Act, of the common law with respect to trademark infringement and unfair competition, and of state law. The letter demanded, among other things, that the defendant cease and desist from using the JOHNNY’S mark, retrieve and destroy all promotional documentation in its possession or under its control bearing the mark, and provide an accounting of all profits and advantages it had derived from use of the mark. (Plaintiffs Exhibit 4).
As a result of this letter, and following an exchange of telephone calls and letters between counsel for the parties, in July 2001 the defendant began to label and distribute its new product under the names “Johnny Fleeman’s” and “Johnny Fleeman’s GOURMET,” although the speed with which it did so, and the time during which and extent to which the old product remained or remains on store shelves is a source of dissatisfaction to the plaintiff. The defendant acknowledges that it continued to ship its existing stock of product bearing the “JOHNNY’S” mark throughout 2001, and that its website contained images of products bearing the “JOHNNY’S” name until February 2002.
II. ANALYSIS
A. Acquiescence and Laches
The defendant has raised the affirmative defenses of acquiescence and laches to the plaintiffs claims. The United States Court of Appeals for the Sixth Circuit has explained the distinction between these two defenses as follows:
Laches is a negligent and unintentional failure to protect one’s rights while acquiescence is intentional. Acquiescence requires “a finding of conduct on the plaintiffs part that amounted to an assurance to the defendant, express or implied, that plaintiff would not asserthis trademark rights against the defendant.”
Elvis Presley Enterprises, Inc. v. Elvisly Yours, Inc.,
Both laches and acquiescence require a showing of an unreasonable delay by the plaintiff in bringing suit, and a resulting material prejudice to the defendant.
Kellogg Co. v. Exxon Corp.,
With respect to what amounts to an unreasonable delay, this Circuit holds faithfully to the principle that “a suit will not be barred [by laches] before the analogous statute [of limitations] has run but will be barred after the statutory time has run,” describing it as a presumption that “should remain strong and uneroded in trademark cases.”
Tandy Corp. v. Malone & Hyde, Inc.,
In this case the Court finds that the plaintiff did not express its intention to assert its exclusive right to the “Johnny’s” mark until March 6, 2001, more than four and a half years after learning of the defendant’s use of the mark and indicating that such right would not be asserted, and well beyond either of the applicable limitations periods. Contrary to the plaintiffs contention that it “again discovered” in early 2001 that the defendant had continued to use the term “Johnny’s” on its product, it should have been on notice of the continual use of “Johnny’s” by the defendant in one form or another since their first contact in 1997. Far from indicating that it would change its name, the defendant had responded at that time to the effect that it had the right to continue to use the name “Johnny’s.” (Defendant’s Exhibit 5). The plaintiff may not rely on an unreasonable and unfounded notion that infringing activity had ceased after initial contact in order to defeat a claim of laches or acquiescence.
See Nartron Corp. v. STMicroelectronics, Inc.,
Moreover, during those intervening years the defendant invested significant effort and funds in expanding its business using various incarnations of the term “Johnny’s,” all in reasonable reliance on the tacit assurance by the plaintiffs predecessor company that such use was permissible. This reliance greatly increased the defendant’s potential liability in a long-delayed trademark action and clearly amounts to prejudice to the defendant. The Court therefore concludes that the
The Court’s finding of laches does not end the inquiry, however, because laches alone would only bar damages for past violations, whereas affirmative acquiescence by the plaintiff would also typically bar injunctive relief.
Kellogg Co.,
In forwarding this theory, the defendant relies primarily on the 1997 communications between Mr. Fleeman and Mr. Meaker. As noted above, Mr. Meaker first wrote to Johnny’s Inc. on July 10, 1997, complaining of customer confusion regarding the name “Johnny’s” as evidenced by the defendant’s coupons having been sent to Johnny’s Fine Foods for redemption. Mr. Meaker’s letter also notes that the trademark “Johnny’s” had been registered to his company since 1973. However, upon receiving the overly self-assured response from counsel representing the defendant, Mr. Meaker followed up with a letter dated August 14, 1997, in which he expressly indicated that his sole interest was in resolving the confusion with respect to redemption of the defendant’s coupons. The text of that letter is significant and reads as follows:
Dear Mr. Smith:
The current confusion centers on the “Redeemable Coupons.” I trust this and any possible future customer confusion can be avoided.
Could your company’s address be emphasized in bigger print on these coupons? Also in the near future could they [sic] type of lettering be changed, such as all capital letters, or could some other or additive changes be made to hopefully avoid customer confusion?
This is my objective and the purpose of my writing of these letters.
Thank you for your consideration.
(Defendant’s Exhibit 6). Despite the broader implications of Mr. Meaker’s first letter to the defendant, the focus of his August 14 letter is perfectly clear. The Court concludes that it would be difficult to construe this letter as anything other than an assurance to the defendant that the plaintiffs predecessor was simply seeking changes to the defendant’s coupons to ensure that they were more distinctly recognizable by customers and were routed properly, rather than asserting any trademark rights with respect to use of the name “Johnny’s” on the defendant’s goods.
Although the record includes evidence that Mr. Meaker’s secretary, Ms. June Wahlstrom, recorded a note on August 20, 1997, that would indicate that Mr. Fleeman had verbally informed Mr. Meaker that he was going to change his label, 6 the Court finds that this vague, third-hand information is insufficient to overcome the obvious import of Mr. Meaker’s own August 14 letter. Ms. Wahlstrom testified that she did not actually hear the conversation between Mr. Meaker and Mr. Fleeman, and that her note was simply her “interpretation” of Mr. Meaker’s brief description of the conversation. (Plaintiffs Exhibit 253, Wahlstrom Deposition, p. 26 11. 4r-14). Even assuming, despite Mr. Fleeman’s denial, that any conversation took place between Mr. Meaker and Mr. Fleeman after the August 14 letter, Ms. Wahlstrom could have misunderstood what she was told about the conversation, or could have mistakenly referred to “label” rather than “coupon.” Moreover, the “change” to which her note refers could simply have been larger print or different lettering, as Mr. Meaker had asked the defendant to use on its coupons. In short, the Court refuses to infer that this note establishes that Mr. Fleeman voluntarily offered to change the substance of his mark despite Mr. Meaker’s written request merely for changes to the defendant’s coupons. The Court’s conclusion is bolstered by the September 3, 1997, letter from the defendant’s counsel to Mr. Meaker, which again makes clear that the issues being addressed by both sides relate solely to “the company’s address on the redeemable coupons, and the type of lettering.” (Id., Attachment 6).
Accordingly, the Court sustains the defendant’s acquiescence defense, and finds that both monetary and injunctive relief are barred in this action subject to the specific exceptions made below.
B. Progressive Encroachment
The plaintiff asserts that even if the Court finds acquiescence, that defense is defeated by the defendant’s progressive encroachment upon the plaintiff’s rights. In 1997, when the plaintiffs predecessor acquiesced to the defendant’s use of the “Johnny’s” mark on its products, the defendant’s products bearing that name were being sold in grocery stores in Tennessee, Alabama, Georgia, South Carolina and Arkansas, in addition to being sold in Mr. Fleeman’s restaurants. At that time the defendant’s products consisted of a steak marinade, a barbecue sauce and a honey mustard dressing. Accordingly, at the
The progressive encroachment theory exists in order to prevent would-be plaintiffs from being forced to sue at the first sight of possible infringement, before the potential for actual confusion in the marketplace has become apparent or been realized. In other words, a plaintiff may rely on progressive encroachment in cases where an earlier suit might have been premature: “it applies in cases where the defendant has engaged in some infringing use of its trademark ... but the plaintiff does not bring suit right away because the nature of defendant’s infringement is such that the plaintiffs claim has yet to ripen into one sufficiently colorable to justify litigation.”
Kellogg Co.,
Not just any change in the manner in which a defendant uses a mark will suffice to constitute progressive encroachment, however. “Progressive encroachment requires something about the defendant’s use of the mark to have changed significantly.”
Nartron,
As noted above, at the time of the plaintiffs acquiescence, the defendant was using the plaintiffs entire mark on identical products in several of the same geographic areas, and the plaintiffs predecessor was already noting and complaining of confusion within commercial channels as evidenced by the misdirection of the defendant’s coupons to the plaintiff. Moreover, it was taking place in a large enough geographic area by 1997 that the likelihood of confusion could already have been established at the time the plaintiff learned of the infringement; in fact, it was administrative confusion on the part of professionals that first brought the infringement to the plaintiffs attention. The defendant’s expansion since that time into a larger geographic area has undoubtedly increased the
number
of consumers who might have been confused as to the origin of the parties’ products, but this change is one of degree, not of kind, and is not determinative on the critical question of “whether and when any likelihood of confusion might have ripened into a claim.”
See Kellogg
at 571 (quoting
Kason Indus., Inc. v. Component Hardware Group,
In fact, the increase in the scope of the defendant’s business is one of the very factors typically required in order for it to show prejudice, one of the elements of its estoppel defense.
Ralston Purina Co. v. Midwest Cordage Co.,
Moreover, the changes in the defendant’s mark over the years have actually decreased, rather than increased, the similarities between it and the plaintiffs mark, as the name on the defendant’s labels has evolved from “Johnny’s” and “Johnny’s Gourmet” to “Johnny Fleeman’s Gourmet.” Even in March 2001, when Mr. Fleeman was contacted by counsel for the plaintiff, his mark was no more similar to the plaintiffs than it had been at the time of the plaintiffs acquiescence in 1997. Based on the facts presented in this case, the Court finds the plaintiffs progressive encroachment theory to be without merit.
C. Inevitability of Confusion
Having found that the plaintiff acquiesced to the defendant’s use of the “Johnny’s” mark, the Court must consider whether and to what extent the plaintiff is bound by that acquiescence.
Courts are mindful in this context that the paramount interest at stake in trademark cases does not belong to either the plaintiff or the defendant, but is that of the public in avoiding confusion over the source of goods in the marketplace.
Coach House Restaurant Inc.,
Absent estoppel by acquiescence, the critical determination in a trademark case such as the one presented here would usually be whether the defendant’s label is
likely
to cause confusion or deception regarding its origin. Factors to be considered in making that determination include: 1) strength of plaintiffs mark; 2) relatedness of the parties’ goods; 3) similarity of the designs; 4) evidence of actual confusion; 5) marketing channels used; 6) likely degree of purchaser care; 7) defendant’s intent in selecting the design; and 8) likelihood of expansion of the product lines.
The defendant concedes the strength of the plaintiffs “JOHNNY’S” and “JOHNNY’S LIGHT” marks as incontestable registered trademarks, as well as the relatedness of the goods, and overlap in marketing channels. Further, it is apparent that the purchase of the parties’ products involve a relatively low degree of purchaser care. These factors would weigh in favor of the plaintiff in the typical analysis, and do so to a lesser extent here.
The defendant has expanded its distribution in recent years, and also competes nationally with the plaintiff through its internet sales. While Mr. Fleeman did not actually intend to trade on the plaintiffs goodwill by using his own name on his product, he did continue to use the name after being made aware of its use as a registered trademark by the plaintiff on similar products. Under normal circumstances, these factors would weigh in favor of the plaintiff. In this case, however, the defendant took all these actions with the tacit permission of the plaintiffs predecessor, who had actively noted the defendant’s use of the “Johnny’s” mark and explicitly limited his objection to the format of the defendant’s coupons. Accordingly, these factors do not weigh in favor of either party.
A key issue in this analysis is the similarity of the marks currently in use. The similarity between particular marks is a question of fact.
Daddy’s Junky Music Stores v. Big Daddy’s Family Music Ctr.,
As of July, 2001, all of the defendant’s new product has been labeled with the mark “Johnny Fleeman’s” or “Johnny Fleeman’s GOURMET.” 8 The mark appears in all cases to be prominently featured at the top center of the label, with each word of the mark on a separate horizontal line. Both “Johnny” and “Flee-man’s” have initial capitalization only, and appear in slightly italicized font of the same size, notably larger than that of the actual product description (i.e. “HONEY MUSTARD DRESSING,” etc.) or the rest of the label. The word “GOURMET” is fully capitalized in block letters, and almost always directly below “Fleeman’s” in a ribbon banner; in at least one instance, it appears in a shield-type emblem. 9 All of the defendant’s labels are black with predominantly white print.
In comparison, the plaintiffs labels are not nearly as uniform. (See product labels pictured in Plaintiffs Exhibit 33). It appears that in most cases the “Johnny’s”
The appearance of the parties’ products is thus plainly distinct, particularly when taken in their totality. The true test of the possibility of confusion, however, is not in a side-by-side comparison of the products, but in whether a consumer with only a vague notion or recollection of the product line he seeks would be confused by encountering one without the other.
See Jet, Inc. v. Sewage Aeration Sys.,
This mark also happens to be a personal name, the use of which on an individual’s goods was historically considered to be “a personal and inalienable birthright,” and which even now is enjoined only to the extent actually necessary to prevent confusion.
Perini Corp. v. Perini Constr., Inc.,
The plaintiff has argued that the addition of Mr. Fleeman’s surname is insufficient to avoid confusion, because the public tends to adopt abbreviated versions of lengthy product names. While this has been found to be true when a mark consists of a root term and qualifying words, Daddy’s Junky Music Stores, Inc. at 283, that is not the case with the defendant’s current mark. “Fleeman’s” is not merely a qualifier or modifier likely to be dismissed or ignored by the public, but is a crucial part of a distinct name likely to be taken as a whole. In this way it is very different from the plaintiffs “Johnny’s Fine Foods,” which Mr. Szybura, president of the plaintiff company, testified is routinely shortened to “Johnny’s.” While the defendant’s modifier “GOURMET” is as likely to be dropped in common parlance as the plaintiffs “Fine Foods,” that still leaves the distinct “Johnny Fleeman’s” to distinguish the defendant’s wares from the plaintiffs.
As evidence of the propensity to shorten the defendant’s mark to “Johnny’s,” the plaintiff points to a grocery store receipt on which the defendant’s product is referenced as “JHNYS SAUCE.” (Plaintiffs Exhibit 42). Mr. Crabill, the chief executive officer of the plaintiff company, ac
In order for this to remain true, however, it is important that the defendant’s product be consistently held out as “Johnny Fleeman’s” or “Johnny Fleeman’s GOURMET.” The Court finds that the defendant’s use of the “Johnny’s” mark, alone or in combination with “GOURMET,” on nearly identical products in the same areas and marketing channels, would indeed lead to inevitable confusion by the public between the parties’ products. Accordingly, this aspect of the plaintiffs suit is revived from acquiescence, and any and all such use shall be enjoined.
The plaintiff has also cited evidence of a few cases of confusion between the products. The first such example was the 1997 attempt by a coupon clearinghouse to redeem the defendant’s coupons with the plaintiff, as discussed above, a mistake that has continued sporadically in the intervening years. Although the Court doubts that a coupon clearinghouse constitutes a marketplace in which confusion is relevant for the purpose of trademark infringement analysis, it accepts this evidence to the extent that such confusion may be minimally indicative of the possibility of confusion in other contexts. Even for that purpose, however, the Court concludes that a handful of mistakes at a clearinghouse in the course of regularly handling a huge volume of coupons does not evidence any significant confusion there or risk of confusion elsewhere. This is particular true where both Mr. Szybura and Mr. Fleeman testified to the effect that they also occasionally receive coupons from totally unrelated companies as the result of clearinghouse mistakes.
The plaintiff also complains about confusion at trade shows and among distributors, which comprise a relevant market for the parties’ goods.
See Reed v. Amoco Oil Co.,
The only evidence of actual confusion by end consumers of the parties’ products are an e-mail to the defendant asking whether the two companies were affiliated; a telephone call to the defendant asking if it had changed its honey mustard recipe after purchasing the plaintiffs product; a telephone call to the defendant asking about his dry seasoning or rub, a product offered by the plaintiff, but not the defendant; and
For example, although the e-mail to the plaintiff about the honey mustard dressing is dated August 5, 2002, the sender indicates that he bought the product at some unspecified time in the past “while living in Nashville.” (Plaintiffs Exhibit 45). Given that the defendant’s products were still being labeled as “Johnny’s GOURMET” until July 2001, and that stock of previously-labeled product continued to be shipped through November 2001 (see Plaintiffs Exhibit 247, p. 11), the Court finds it much more likely that the consumer who sent the e-mail had purchased and been confused by a product bearing the “Johnny’s GOURMET” label rather than the more recent “Johnny Fleeman’s GOURMET.” Accordingly, the Court puts very little weight on these few undated examples of confusion for the purpose of determining whether the defendant’s current mark will inevitably be confused with that of the plaintiff.
Finally, the plaintiff has particularly complained about the defendant’s use of the “Johnny’s” mark on the internet, both in the defendant’s domain name and as a metatag.
10
These terms require some definition. As the Sixth Circuit has explained, each website on the internet has a domain name, “which is an identifier somewhat analogous to a telephone number or a street address.”
Interactive Products Corp. v. a2z Mobile Office Solutions, Inc.,
An internet metatag is very different from a domain name. When an internet user, or “surfer,” is looking for a particular website but does not know the site’s domain name, he or she may use one of several available internet search engines to locate the site. The surfer enters one or more keywords about the site into the search engine, and the engine compares
In this case, however, the plaintiff has not introduced any evidence on this issue to analyze. It is not even absolutely clear that the defendant has adopted the term “Johnny’s” as a searchable metatag for its website. To the contrary, Mr. Fleeman testified at trial that he was not clear on how metatags are set up, and despite having been provided with the name, address and telephone number of the individual responsible for designing and coding the defendant’s website (see Plaintiffs Exhibit 247, p. 10), the plaintiff has not offered any testimony from that individual to support its claims. As explained above, to the extent that the same internet search may retrieve the websites of both parties, that could be the result of the term “Johnny” appearing in the domain name or text of the sites, rather than its use as a metatag.
Moreover, even assuming that the defendant has employed the term “Johnny’s” as a metatag for its website, that term is so generic and ubiquitous on the internet that any additional confusion caused by its use by both of these parties would be negligible at best. For example, a search conducted on the two most popular search engines, Google and Yahoo, for the keyword “johnny’s” will retrieve a list of either 157,000 or 251,000 options of websites featuring everything from vegetable seeds to Irish pubs to military music lyrics. Even adding the additional keyword “sauce” will result in a list of either 2,850 or 4,440 websites. With either search, the plaintiffs website is ranked fifth among all options, while the defendant’s site does not even appear on the first page of results. Similar results are obtained by substituting the keyword “dressing” or “seasoning,” and even by searching for “johnny’s gourmet” — the very words used in the defendant’s offending domain name — the surfer will retrieve either 3,940 or 6,070 websites, with the plaintiffs site ranked higher than the defendant’s in both cases.
The Court hardly sees how any the use of “Johnny’s” as a metatag for the defendant’s website could add significantly to this confusion. Absent any evidence to the contrary from the plaintiff, the Court finds that the alleged metatag use does not render confusion between the parties or their products inevitable.
III. CONCLUSION
For the reasons stated above, the Court finds for the defendant on the plaintiffs suit for damages. The Court finds for the plaintiff in part on the plaintiffs request for injunctive relief, and orders that the defendant is enjoined from any and all use of the term “Johnny’s” or “Johnny’s Gourmet” in reference to itself or its products in any context capable of being observed
An appropriate order shall be entered.
ORDER
In accordance with the memorandum contemporaneously entered, the Court finds for the plaintiff in part on the plaintiffs request for injunctive relief, and orders that the defendant is hereby enjoined from any and all use of the term “Johnny’s” alone or “Johnny’s Gourmet” in reference to itself or its products in any context, including, but not limited to, corporate name, product labels, coupons, recipes, advertisements and websites (including domain and text). The defendant is ordered to take whatever reasonable steps are necessary to remove any offending products or other designations currently in the marketplace or trade industry.
In all other respects, the Court finds in favor of the defendant.
Entry of this order shall constitute the judgment in this action.
It is so ORDERED.
Notes
. Prior to 1998, the marks were owned and used by Johnny’s Enterprises, Inc., which has since merged into Johnny’s Fine Foods, Inc.
. Mr. Fleeman testified that his company did not issue coupons again until mid to late 2000, when he issued coupons in the form of a booklet adhered directly to his product.
. There is nothing in the record to support Ms. Wahlstrom's vague "feeling” that Mr. Meaker and Mr. Fleeman spoke again in December 1997, and nothing is known about the substance of any such conversation. (Wahlst-rom depos. P. 22 1. 25 — p. 23 1. 15).
. Because the law of laches and acquiescence in Tennessee is "virtually identical to the law of this Circuit,” (Elvis Presley Enterprises at 895, n. 3), the Court's analysis herein under the guiding federal principles is also disposi-tive of the state law claims.
. The Court acknowledges that the United States Court of Appeals for the Eleventh Circuit has indicated in several cases that acquiescence is the equivalent of an implied license, capable of being revoked at any time by the licensor.
See, e.g., Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc.,
. Specifically, that note reads: "Mr. Meaker talked with Mr. Fleeman. He is going to use up supply of labels and then change.” (Plaintiff's Exhibit 253, Wahlstrom Deposition, Attachment 5).
. Where, for example, a defendant's use of a mark expands beyond its long-time use in a single city, a plaintiff who has acquiesced to such previous use may rightfully object to the defendant’s expansion to other areas.
See Conan Properties, Inc. v. Conans Pizza, Inc.,
. It is undisputed that product under the old label remained on shelves and continued to be shipped from the defendant’s warehouse until those supplies were depleted. Although the Court understands the plaintiff's frustration with the length of time during which the defendant's "Johnny's” designation remained in the marketplace as a result of reliance on attrition to replace the product, the evidence that the old product remained available at least into 2002 does not prevent the Court from crediting Mr. Fleeman’s testimony about the date on which he began labeling his new product with his new labels.
. See "Johnny Fleeman’s GOURMET STEAK SAUCE and SEASONING,” Defendant’s Exhibit 40; also pictured in Plaintiff’s Exhibit 40.
. The plaintiff also objected to the use of "Johnny’s” alone and "Johnny’s GOURMET” in reference to the individual products featured on the defendant’s website; Mr. Flee-man testified that those had been corrected to conform with his new label logos by the time of trial.
. For a more detailed description of the operation of domains and metatags, see Interactive Products at 691-92.