Global Commodities, Inc. v. Capital Distributors, LLC and Capital Imports, LLC

Background

Global Commodities, Inc. (Global) brought this trademark infringement action against Capital Distributors, LLC and Capital Imports, LLC (collectively, Capital) after the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office denied Global's petition to cancel Capital's registered trademark — a design mark depicting a standing impala in black and white under a partial red heart (Reg. No. 5,926,738). Global holds two federally registered marks it describes as "Fawn Image" (Reg. No. 3,966,152) and "Fawn Image 2" (Reg. No. 3,239,488), and also claims rights in unspecified distinctive features of its rice bag design.

Global's original complaint asserted seven counts. Relevant here are Count IV (common law trademark infringement, alleging copying of Global's Fawn Image trademarks and bag features) and Count VI (common law trade dress infringement). In August 2024, the court dismissed Count VI, finding Global failed to identify the specific elements comprising its alleged protectable trade dress. The deadline to amend pleadings under the Pretrial Scheduling Order was August 15, 2024.

Nearly two weeks after that deadline, Global filed its first motion to amend in August 2024, seeking to add allegations about common bag design features. Magistrate Judge Foster denied that motion, finding Global had not demonstrated good cause due to lack of diligence. Global did not appeal that ruling.

Global proceeded through discovery, serving interrogatory responses in September 2024 identifying specific unregistered trademark elements in its rice bag design (including a deer, decorative border, decorative corners, starburst, and colored printing), and serving an expert report in March 2025 on likelihood of confusion based on those bag design elements. Capital served a rebuttal report.

In June 2025, Capital moved for partial judgment on the pleadings (a motion brought under Federal Rule of Civil Procedure 12(c), which allows a party to move for judgment based on the pleadings after they are closed) on Count IV, arguing Global could not pursue trade dress claims through that count. On October 15, 2025, the court granted Capital's motion, finding Global had not plausibly pleaded a common law trademark infringement claim in its bag design, and dismissed Count IV without prejudice "to the extent based on trade dress." Global then filed the instant, third motion for leave to amend.

Legal Standards

Rule 15 vs. Rule 16

Federal Rule of Civil Procedure 15(a)(2) provides that courts should "freely give leave" to amend "when justice so requires." However, when the deadline for amendment set in a scheduling order has passed, Federal Rule of Civil Procedure 16(b)(4) requires the moving party to demonstrate "good cause" for modifying the schedule. Binding Eighth Circuit precedent confirms Rule 16's stricter standard governs in that situation. Williams v. TESCO Servs., Inc., 719 F.3d 968, 977 (8th Cir. 2013); Bradford v. DANA Corp., 249 F.3d 807, 809 (8th Cir. 2001).

Additionally, when a party seeks to extend a deadline after it has already expired, the party must show "excusable neglect," Albright as Next Friend of Doe v. Mountain Home Sch. Dist., 926 F.3d 942, 951 (8th Cir. 2019), and under District of Minnesota Local Rule 16.3(d), must demonstrate "extraordinary circumstances" justifying the extension.

Analysis

Applicability of Rule 16

The parties agreed the amendment deadline under the scheduling order had passed before Global filed this motion. The court therefore applied Rule 16's good cause standard. The court rejected Global's argument that the more liberal Rule 15 standard should apply because the court's prior dismissal was without prejudice, noting that Global cited no binding authority for the proposition that a without-prejudice dismissal impliedly extends scheduling order deadlines.

Good Cause Analysis: Lack of Diligence

The primary measure of Rule 16's good cause standard is the moving party's diligence. Bradford, 249 F.3d at 809. The court found Global lacked diligence for several independent reasons:

1. Facts long known: The specific bag design elements Global sought to add — decorative borders, decorative corners, starbursts, and left-side boxes — were not new. Global had argued Capital copied these same packaging details in the TTAB cancellation proceeding concluded in 2023, and had attempted to add similar allegations in its August 2024 amendment motion. The court compared the allegations in the TTAB record and the proposed amended complaint to illustrate substantial overlap.

2. Prior denial not appealed: Magistrate Judge Foster already found in September 2024 that Global lacked diligence in seeking to amend to add similar allegations. Global did not appeal that ruling. The court reasoned that if Global was not diligent in August 2024, it could not establish diligence more than a year later.

3. Attorney strategy does not equal good cause: Global argued it did not know until the October 2025 judgment on the pleadings that it could not pursue trade dress allegations through Count IV, even though Count VI had already been dismissed for the same deficiency. The court characterized this as the kind of strategic choice — defending existing claims rather than amending — that courts consistently find insufficient to show good cause. E.g., Ellingsworth v. Vermeer Mfg. Co., 949 F.3d 1097, 1100 (8th Cir. 2020); U.S. ex rel. Roop v. Hypoguard USA, Inc., 559 F.3d 818, 823 (8th Cir. 2009).

4. Attempted circumvention of prior ruling: The court found it appeared Global had strategically used Count IV and subsequent discovery (including interrogatory responses and an expert report elaborating on the same bag design elements) in an attempt to inject allegations into the case after Magistrate Judge Foster had denied permission to amend to assert those same elements. The court stated it could not countenance this strategy.

5. Trademark vs. trade dress distinction immaterial: The court rejected Global's argument that its bag label allegations constituted "trademark-specific particulars" rather than trade dress, calling it "a distinction without a difference" and citing McCarthy on Trademarks and Unfair Competition and Supreme Court authority including Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023), and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).

6. No change in law: The court noted that the requirement to plead specific trade dress elements is well-established and predates this litigation.

Prejudice Not Reached

Because Global failed to demonstrate diligence, the court declined to address whether Capital would be prejudiced by the proposed amendment, consistent with Eighth Circuit guidance. Sherman v. Winco Fireworks, Inc., 532 F.3d 709, 717 (8th Cir. 2008).

Capital's Fee Request Denied

Capital requested an award of fees and costs for responding to Global's motion. The court declined, finding that while Global's motion was unsuccessful, it was not made in bad faith and was not groundless.

Disposition

The court denied Global's Motion for Leave to Amend (Doc. No. 170).