comparative advertising isn't confusing

Windmar PV Energy, Inc. v. Solar Now Puerto Rico, LLC, 2025 WL 725078, NO. 24-1570 (RAM) (D.P.R. Mar. 6, 2025)

A frivolous lawsuit against comparative advertising; the court gets the right result at least. Windmar and Solar now compete in the Puerto Rico market for the sale and installation of solar energy equipment. Windmar has registrations with various elements including: the silhouette of the sun’s corona; the words “WINDMAR” or “WINDMAR HOME”; a combination of the colors orange, blue, black, and grey; and a stylized image of a windmill replacing the “I” in “WINDMAR.” The typical logo shows the words “WINDMAR HOME” written in blue and grey, with the “I” replaced by a blue windmill logo; the words are placed under and within an orange outline of a sunburst or corona. Windmar alleged that it was the “number one” company in the “solar energy industry in Puerto Rico.”

Solar Now’s marketing campaign featured ads and billboards that showed a salesman pointing to a form listing three different options for solar companies: a colored logo of Solar Now and two greyscale logos that feature the profile of a sun and its corona, one titled “PAQUITO SOLAR” and the other “MOLINITO.” Windmar alleged that “MOLINITO” (which translates to “little windmill”), when used in conjunction with the sun-related imagery, alludes to Windmar’s logo. Solar Now’s logo is next to a “X” mark of approval while the two greyscale logos are placed further down the form, allegedly implying that they are inferior options to Solar Now.

billboard

social media post

This just didn’t plausibly allege likely confusion, although the court relied way too heavily on the dissimilarity of the Windmar marks from what Solar Now actually used, as opposed to the obvious comparative advertising context. At least the court noted that most of the Pignons factors favoring Windmar (similarity of goods, channels of trade, advertising, and prospective consumers) “could be true for any two companies competing in the same market and geographic area, and do not weigh as heavily in the Court’s analysis.” The court declined to rely on nominative use because the First Circuit hasn’t adopted a specific test.

Nor did Windmar successfully plead fame for dilution. Even if the marks were famous, the comparative advertising and parody exclusions applied. “[W]hen viewed in the light most favorable to Plaintiff, the purpose of billboards and social media posts at issue is clear to a reasonable consumer: humorous comparative advertising showing Solar Now should be chosen over its (fictional or real) competitors.” Separately, the parody exclusion also applied, because “MOLINITO” “is not a particularly flattering phrase, mocking Plaintiff’s logo and reputation by referencing it as a tiny windmill.” It did not plausibly serve as a source-indicator for Solar Now. “It is abundantly clear that Plaintiff is the subject of Solar Now’s joke.”

Although the court misunderstood descriptive fair use to be limited to personal names, that didn’t matter.

"natural" claims proceed because reasonable consumers can know little about pet food

Goetz v. Ainsworth Pet Nutrition, LLC, 2025 WL 692426, No. 24-CV-04799 (JPO) (S.D.N.Y. Mar. 3, 2025)

Plaintiffs alleged violations of Sections 349 and 350 of the New York General Business Law and breach of warranty based on defendants’ allegedly false claims that their products were “natural” rather than synthetic. The court denied a motion to dismiss.

Defendants’ products use the label “natural food” in varying formats and sizes, alongside the phrase “with added vitamins, minerals & taurine.” Plaintiffs identified forty-seven products so labeled yet containing ingredients classified as synthetic by the FDA. The labels disclose “added vitamins, minerals & taurine,” but plaintiffs alleged that “an ordinary person would understand [this] claim to mean that the added vitamins, minerals and/or taurine are natural as well.”

The court applied the reasonable consumer standard, noting that determining reasonableness as a matter of law is appropriate only where a plaintiff’s claims are “patently implausible or unrealistic.” The requirement used by the Second Circuit that a “significant portion” of consumers be likely to be deceived “does not impose a particularly onerous burden on Plaintiffs.” The court quoted the Second Circuit’s 2008 affirmation that New York’s consumer protection laws are “meant to take into account the impact of allegedly deceptive statements on the ‘vast multitude which the statutes were enacted to safeguard—including the ignorant, the unthinking and the credulous who, in making purchases, do not stop to analyze but are governed by appearances and general impressions.’ ” City of New York v. Smokes-Spirits.com, Inc., 541 F.3d 425 (2d Cir. 2008), rev’d on other grounds sub nom. Hemi Grp., LLC v. City of New York, 559 U.S. 1 (2010) (quoting Guggenheimer v. Ginzburg, 43 N.Y.2d 268, 273 (1977). Reasonable consumers can be “less astute than average.”

“It is not unreasonable as a matter of law for a consumer to expect that a product labeled ‘natural’ to contain only natural, and not synthetic ingredients.” That was true even though product labels said only “natural” and not “100%,” “solely,” “exclusively,” or “only” “natural.”

Defendants also argued that plaintiffs failed to plead that the ingredients were actually synthetic.

But the complaint identified at least some “synthetic ingredients,” including glycerin, xanthan gum, and menadione sodium bisulfate complex. Although FDA definitions of “synthetic” are not binding, they were “persuasive evidence” of what a reasonable consumer might consider to be “synthetic” as opposed to “natural.” Cases involving ingredients with both natural and synthetic forms were inapposite. “[A]t least some of the ingredients in Defendants’ products are named in their synthetic forms—for example, ‘menadione sodium bisulfate complex’ rather than the more generic ‘vitamin K.’” True, some of the other ingredients can occur naturally, and it was not enough to allege that “citric acid” must be synthetic simply because “[m]ore than 90 percent of commercially produced citric acid … is manufactured through a processed derivative of black mold.” However, given the allegations of unequivocally synthetic ingredients, “it is not too far a leap to infer that, because Defendants are willing to use synthetic forms of some vitamins and minerals, they are more likely to use the synthetic forms of others, particularly in light of widespread commercial practice.”

Nor did the many possible meanings of “natural” defeat the claim. “[T]he mere fact that ‘the term’s use is confusing to consumers’ does not prevent it from being used deceptively.” Also, defendants didn’t offer a single definition of “natural” that their products did satisfy. “The one definition they provide— ‘occurring in conformity with the ordinary course of nature’—is at least plausibly violated by the inclusion of synthetic, lab-created vitamin and mineral analogues.” The court commented that “it is unclear what purpose including ‘natural’ on their packaging would serve if not to indicate a lack of unnatural ingredients or components.”

Nor was it unreasonable for any consumer to believe that pet food could truly be “natural,” despite defendants’ argument that packaged pet food has to be processed. “[I]t is not clear why pet food—like some shelf-stable human food—cannot be made without the addition of synthetic (as opposed to naturally occurring) vitamins. It is also far from clear that the ordinary reasonable consumer is intimately familiar with the nature of the pet food industry and its processing norms.”

Likewise, the court rejected defendants’ argument that any ambiguity could be cleared up by the ingredient panel. “The Court is unpersuaded that all reasonable consumers should know what ‘menadione sodium bisulfate complex’ (synthetic vitamin K) is, for example. This is especially true given that the naturally occurring forms of the same vitamins and minerals have similarly difficult-to-pronounce names, like ‘phylloquinone’ (one of two forms of naturally occurring vitamin K).” Moreover, even if the list of ingredients were intelligible to an ordinary shopper, “a reasonable consumer should not be expected to consult the Nutrition Facts panel on the side of the box to correct misleading information set forth in large bold type on the front of the box.”

The express warranty claim also survived, for the same reason. And the court declined to dismiss claims as to unpurchased goods, since the products that plaintiffs did buy were sufficiently similar to those SKUs. “All are types of wet and dry pet food that are labeled ‘natural,’ and each contains a mix of synthetic ingredients. That is enough.” Variations in the prominence of “natural” and its corresponding potential to mislead created fact issues for discovery.

 

job postings aren't "commercial advertising or promotion" for hiring party's goods/services

Sun Nong Dan Foods, Inc. v. Kangnam1957, Inc., 2024 WL 5440252, No. 2:23-cv-09779-WLH-RAO (C.D. Cal. Nov. 19, 2024)

Not a surprise, but fills a gap in the caselaw: employment ads aren’t “commercial advertising and promotion” for the business trying to hire.

SND alleged that defendants stole SND’s recipe for its “flagship” dish “galbi jjim” and opened a “counterfeit” restaurant offering the same dish.

SND alleged that “two job posts and the employee training in 2019 which involves the dissemination of false statements, constitute false commercial adverting.” A customer allegedly posted the following in a review on Yelp: “We asked a few questions [of employees] since this a new spot, and we learned the head Chef of [defendant] Daeho was from KTown in LA.” Daeho also allegedly published job posts to SF Korean and go20.com:

We are looking for servers and kitchen staff to join our upcoming Korean food restaurant opening in early February in San Francisco’s Japantown neighborhood.

Former head chef of Sun Nong Dan in Los Angeles is preparing to open a new restaurant in San Francisco’s Japantown.

The main menu will be tang (hot pot), and we’ll be serving up some of the best hot pot and other dishes you’ve never had in San Francisco, like BBQ, galbi jjim, and galbi tang.

Open 7 days a week, starting at 7am, part-time and full-time positions available.

If you’re interested in food, want to make money, or want to learn the restaurant business, we want to hear from you….

SF Korean was allegedly the “most well-known media platform within the Korean community in the San Francisco Bay Area.” Allegedly, “[f]or the Korean restaurants, recognition within the Korean Community is crucial for success.” And the representation about having the former head chef was allegedly false.

Instead, defendant C. Park allegedly sought employment at SND with the intent of stealing trade secrets which he then misappropriated, specifically recipes, such that defendants’ “galbi jjim and three side dishes have identical or nearly identical tastes and flavors to those of Sun Nong Dan, as noted by numerous Yelp reviewers.” Daeho allegedly “misappropriated Sun Nong Dan’s confidential galbi preparation method, which has the benefit of the meat easily falling off the bone.” And it allegedly misappropriated SND’s “confidential culinary processes and business operations designed to efficiently handle a large volume of orders for galbi jjim, including order-taking, cooking, the use of specialized cooking equipment, and serving methods tailored for quick handling of large-scale orders which preserving the deep flavors of galbi jjim.”

The court granted defendants’ motion to dismiss the state and federal false advertising claims, though other claims remain.  

SND alleged that the employee training in 2019, where one defendant allegedly instructed Daeho employees to make false statements about Daheo Kalbijjim’s relationship with SND, constituted false commercial advertising. But the Yelp review didn’t reflect that any employee made a false statement as part of a “commercial advertisement about [defendant’s] own or another’s product.” “Instead, the allegation indicates that an employee answered a customer’s questions with an undisputed fact—that the chef had worked in Koreatown in Los Angeles.”

As for the job postings, which can be commercial speech, they still weren’t plausibly published with “the purpose of influencing consumers to buy defendant’s goods or services.” It didn’t even include the restaurant’s name. (Note that California law doesn't have the same "commercial advertising or promotion" language--but when competitor-plaintiffs sue, courts usually interpret the relevant state false advertising laws as covering the same conduct.)

However, the complaint sufficiently alleged misappropriation of SND’s galbi jjim recipe and cooking method. But SND’s order-taking method, “which involves accepting pre-orders before seating customers,” was not plausibly a trade secret. By virtue of visiting the restaurant, any patron could see the method.