Steeped, Inc. v. Nuzee, Inc.

Background

Steeped, Inc. brought trademark-infringement claims against Nuzee, Inc. Steeped alleged that Nuzee’s use of “Steep Coffee,” “Steep Bag Coffee,” “Steep Pouch,” “Steeped to Perfection,” and similar terms in connection with a Pine Ranch Coffee Co. product was confusingly similar to Steeped’s STEEPED COFFEE trademark and other marks.

Nuzee later moved for summary adjudication under Federal Rule of Civil Procedure 56(g). That rule can allow a court to treat a material fact as established when the fact is not genuinely disputed, but the court explained that the rule applies only after the court applies the summary-judgment standard to a claim, defense, or part of one. Nuzee sought an order establishing nine allegedly uncontroverted facts rather than summary judgment on a claim or defense. After a hearing, the parties filed a joint statement identifying two uncontested facts, leaving seven statements at issue.

Court’s analysis

The court held that Nuzee’s request concerning the seven remaining statements was procedurally improper because Nuzee had not moved for summary judgment on a claim, defense, or part of a claim or defense. The court also exercised its discretion not to treat the statements as established.

The court found that at least one disputed factual issue was embedded in each statement, or that the statement was a legal characterization rather than a fact. For example, Nuzee sought to establish that “steep,” “steeped,” and “steeping” were common, descriptive coffee-brewing terms. The court explained that this assertion supported Nuzee’s legal argument that Steeped’s mark was descriptive rather than suggestive.

Nuzee also sought to establish that it used “steep” and “steeped” on preliminary Pine Ranch packaging because those words described its brewing process. The court said this appeared to repeat part of the legal test for a classic fair-use defense, which requires showing that the use was not as a trademark, was descriptive of the defendant’s goods, and was in good faith. Another proposed statement—that no act by Nuzee constituted willful trademark infringement—was a legal conclusion and therefore not appropriate for treatment as an established fact.

The court identified factual disputes about whether Nuzee manufactured, offered for sale, or sold a coffee product using “steep,” “steeped,” or “steeping” before May 15, 2019. Steeped pointed to alleged customer contacts, including a voicemail referring to “Steeped Bag Coffees,” and evidence discussing a “new Pine Ranch Steep Coffee program.” The court also found a factual dispute concerning whether later-distributed packaging used terms such as “Steep” or “Steeped,” based on a declaration stating that such packaging was displayed at Coffee Fest on August 26, 2019.

Finally, Nuzee sought findings that its Pine Ranch Coffee Co. product was first commercially sold in April 2020 and that Nuzee earned no profit from sales before then. Steeped challenged the meaning of “first commercially sold in commerce” and cited evidence suggesting that offers for sale began at trade shows. The court concluded that these matters could be better clarified at trial.

Disposition

The court DENIED Nuzee’s motion for summary adjudication. The order did not resolve the trademark-infringement claims; it declined to establish the seven remaining proposed facts before trial. Judge Haywood S. Gilliam, Jr. signed the order.