Thursday, June 02, 2016

"purest" is puffery and Himala- is too geographically descriptive to cause confusion

Sustainable Sourcing, LLC v. Brandstorm, Inc., 2016 WL 3064055, No. 12-cv-30093 (D. Mass. May 31, 2016)

The parties compete to sell Himalayan pink salt.  Sustainable Sourcing created an image showing a box of its pink salt, surrounded by bowls of berries and salt.  “One of Defendants’ employees (not surprisingly, no longer employed by them) foolishly copied the Image, mostly leaving the photograph unchanged, but replacing Plaintiff’s product with a depiction of Defendants’ product (the “Altered Image”). Defendants thereafter used the Altered Image in their online and print catalogues.”  After this was discovered, Sustainable Sourcing registered the image and sued; the court allowed further discovery to figure out if there were any damages.

Sustainable Sourcing alleged that Brandstorm falsely claimed that their Pakistani salt was from Tibet; the court denied summary judgment, finding material issues of fact remained.  Brandstorm counterclaimed, asserting trademark and false advertising related claims.  Brandstorm uses the brand name “HIMALANIA,” and have a registration for the word, but it only covers fruits and snacks classes (International Classes 29, 31, and 32). Sustainable Sourcing sells products under the brand name “HimalaSalt,” but without a trademark registration. 

Sustainable Sourcing argued laches, since Brandstorm knew since 2006, when Sustainable Sourcing entered the pink salt market, that its HimalaSalt was competing with HIMALANIA, but didn’t pursue legal action until 2014.  The record didn’t justify summary judgment on laches, given Brandstorm’s argument that it was justified in taking a wait-and-see approach to assess market conditions before suing.

The court found confusion unlikely, given the geographic descriptiveness of “Himala.”  “[B]ecause the only overlap between the parties’ marks is the geographical reference to the Himalayan mountains, this common feature is not likely to lead to confusion. Indeed, the summary judgment record contains evidence of numerous third parties that have registered trademarks covering products with the common root ‘Himala,’ making it even less likely that there will be confusion.”  Also, the court, without explaining who actually had use-based priority in the salt market, reasoned that the Brandstorm registration didn’t protect salt.  Summary judgment against Brandstorm for the word-based claim, but trade dress/packaging-based claims survived because of disputed issues about the overall commercial image of the products, “or whether recent changes to Defendants’ packaging amount to abandonment of the registered mark,” an issue for the jury.

Sustainable Sourcing did win summary judgment on the false advertising counterclaim based on its tagline, “the purest salt on earth,” which was mere puffery.

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