IP Law Daily, TRADEMARK—W.D. Wisc.: NUTRITEK mark for animal feed could infringe same mark for whey powder, (Apr 20, 2017)

By Cheryl Beise, J.D.

A seller of dried whey powder under the federally registered mark NUTRITEK can pursue trademark infringement and related claims against a company that sells animal feed supplements under an identical, registered mark, the federal district court in Madison, Wisconsin, has determined. While the parties’ marks were registered on different goods—human consumable products versus animal consumable products—the plaintiff pleaded common law use of its mark in connection with animal products and plausibly alleged that consumers would mistakenly believe that the parties’ goods emanated from the same source (Foremost Farms USA, Cooperative v. Diamond V Mills, Inc., April 18, 2017, Peterson, J.).

Plaintiff Foremost Farms USA, Cooperative, sells a food ingredient, dried whey powder, under the mark NUTRITEK, which has been federally registered since in 1963 in connection with "partially demineralized dried whey for human consumption, in former Class 46. Defendant Diamond V Mills, Inc., sells animal feed supplements using the same mark, NUTRITEK, for which it acquired federal registration in 2015 in connection with "animal feed supplements," in International Class 5. Foremost sued Diamond V for trademark infringement, false designation of origin, unfair competition under the Lanham Act and trademark infringement, unfair competition, and unjust enrichment under Wisconsin common law. Foremost also filed a claim for cancellation of Diamond V’s mark.

Before the court was Diamond V motion to dismiss Foremost’s complaint for failure to state a claim. Diamond V argued that Foremost cannot plausibly allege a likelihood of confusion because Foremost uses its mark for human consumable products, a market separate and unrelated to the market for animal consumable products where Diamond V uses its mark. While Diamond V might ultimately prevail on some version of this theory, this issue could be resolved on a motion to dismiss, the court said.

Foremost adequately alleged that the parties used their marks in overlapping markets, which made a likelihood of confusion plausible. In its complaint, Foremost alleged that its dried whey is suitable for and used as an ingredient in products for both human and animal consumption. Foremost also alleged that it has sold dried whey under its common law NUTRITEK mark to "manufacturers, customers and ultimately consumers of animal feed products since at least 1995." The court found that Foremost plausibly alleged that it acquired a protectable common law interest in the NUTRITEK mark in connection with animal products through the use of the mark.

The USPTO’s decision to allow Diamond V’s registration, despite Foremost’s prior registration, was not entitled to much weight because the registration decision ordinarily is made solely on the basis of a comparison of the goods identified in the subject application and those cited in the prior registration. However, the court was tasked with evaluating not merely the parties’ use on the goods recited in their registrations, but their actual use in the marketplace. The court declined to consider Diamond V’s evidence outside the pleadings attempting to show that Foremost’s market really was limited to human products, specifically an ingredient for infant formula.

Foremost also plausibly pleaded that Diamond V’s NUTRITEK mark was likely to cause confusion among consumers. Foremost alleged that both Foremost and Diamond V: (1) used their NUTRITEK marks with an identical spelling in similar sans serif font; (2) placed their NUTRITEK marks on bulk bags; (3) sold their NUTRITEK products as ingredients to be blended in edible products for animals; and (4) used the marks in marketing to an overlapping set of buyers. Foremost alleged enough to make it plausible that consumers would reasonably believe that the parties’ products came from the same source, according to the court.

To satisfy Rule 8 pleading standards, Foremost was required only to give "adequate notice of the scope of, and basis for" the asserted claims. Foremost did so with regard to each of its claims, the court said. Diamond V’s motion to dismiss was denied.

The case is No. 3:16-cv-00551-jdp.

Attorneys: Anita Marie Boor (Quarles & Brady LLP) for Foremost Farms USA, Cooperative. Mark L. Zaiger (Shuttleworth & Ingersoll, P.L.C.) and Jeffrey Allan Simmons (Foley & Lardner LLP) for Diamond V Mills, Inc.

Companies: Foremost Farms USA, Cooperative; Diamond V Mills, Inc.

Cases: Trademark WisconsinNews