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

Background

Global owns two federally registered fawn-design marks used with rice. Capital owns a federally registered mark showing an impala with a red partial heart design, also used with rice. Global alleged that Capital’s mark infringed Global’s federal and common-law trademark rights.

The court had previously dismissed some claims and dismissed the bag-design and trade-dress portions of another claim. It also denied Global’s later requests to amend its pleadings to revive those theories. The claims remaining for summary judgment were: review of the Trademark Trial and Appeal Board’s decision concerning Capital’s registration; federal trademark infringement and false designation of origin; and Minnesota common-law trademark infringement.

Summary-judgment standard and trademark claims

Summary judgment is appropriate when the record shows no genuine dispute of material fact and the moving party is entitled to judgment as a matter of law. For the trademark claims, Global had to show a likelihood that consumers would be confused about the source of the parties’ rice products.

The court applied six likelihood-of-confusion factors: the strength of Global’s marks, similarity of the marks, competition between the products, Capital’s intent, actual confusion, and the care consumers use when buying the products.

The court found that Global’s marks were conceptually strong but commercially weak. Global lacked a consumer survey or other sufficient direct evidence showing that consumers strongly associated the fawn marks with Global. The record also showed many third-party rice products using deer or similar animal designs, which weakened the marks’ protection.

The court found the marks dissimilar. Global’s marks showed stylized, horizontally leaping deer, while Capital’s mark showed a more realistic, upright animal with a red partial heart. The products also prominently displayed different brand names and source information, including “AAHU BARAH” or “Al Afia” and the parties’ names or contact information.

The court concluded that the products directly competed in at least some stores, so that factor slightly favored Global. But the record did not support an inference that Capital intended to mislead consumers. Knowledge of Global’s product and an intent to compete were not enough to show an intent to cause confusion.

The court treated the evidence of actual confusion as minimal. It credited, for purposes of summary judgment, two store owners’ statements that they were initially confused, but those incidents did not result in sales. The court found other statements speculative or unsupported. It also rejected Global’s expert survey because the survey tested confusion involving Global’s alleged bag-design mark, not confusion between the registered Fawn Marks and Capital’s Impala Mark.

The consumer-care factor was neutral. Considering all the factors, the court held that no reasonable juror could find a likelihood of confusion between the marks. It therefore granted summary judgment for Capital on the merits of all of Global’s remaining claims.

Lost-profit damages

The court separately granted summary judgment for Capital on Global’s lost-profit claim. A trademark plaintiff seeking damages must prove actual damages and a causal connection between the alleged infringement and those damages. Global’s corporate representative testified that Global was not aware of evidence showing that the alleged infringement caused lost sales or money. Global’s damages expert also could not quantify lost profits caused by Capital’s accused rice.

Attorney fees and motion to strike

Capital requested attorney fees and costs under the Lanham Act’s exception for “exceptional” cases. The court declined to award them, noting that the case had been hard-fought, both parties had achieved varying degrees of success on different motions, and the parties had made accusations against one another. The denial was without prejudice to any request under Federal Rule of Civil Procedure 54(d)(1) and the applicable District of Minnesota local rule.

The court denied Capital’s motion to strike and exclude undisclosed evidence. In discussing summary judgment, the court assumed without deciding that the disputed evidence could be considered and stated that its decision would be the same even if that evidence were included.

Order

The court ordered that Capital’s summary-judgment motion was granted in part and denied in part: summary judgment on Global’s complaint was granted in Capital’s favor, while Capital’s request for attorney fees and costs was denied. Capital’s motion to strike and exclude undisclosed evidence was denied. The court ordered judgment to be entered accordingly.