The opinion of the court was delivered by: SIDNEY STEIN, District Judge
Should the makers of tuna salad be preliminarily enjoined from
stating on its label that it is "Made with Bumble Bee Tuna" when
the trademark to "Bumble Bee Tuna" is owned by another entity?
The answer, in the context of the facts of this action, is "no."
This action arises out of the use of the trademark of one
manufacturer's component product on the labels of another
manufacturer's composite product to advertise the presence of the
former as an ingredient in the latter. Specifically, Bumble Bee
Seafoods, LLC brings this action against UFS Industries, Inc.,
d/b/a Sally Sherman Foods, Inc. ("Sally Sherman") to enjoin Sally
Sherman, a maker of tuna salad, from stating on the lids of its
five-pound tuna salad containers that its salad is "Made With
Bumble Bee Tuna." No one disputes Sally Sherman's tuna salad is
in fact made with Bumble Bee tuna. Plaintiff asserts claims for
trademark infringement in violation of 15 U.S.C. § 1114(1), false
designations, descriptions, and representations in violation of 15 U.S.C. § 1125(a)(1), unfair
competition in violation of New York common law, and trademark
dilution in violation of N.Y. Gen. Bus. Law 360-1.
Bumble Bee seeks preliminary and permanent relief enjoining
Sally Sherman from using the allegedly offending tuna salad lids
as well as actual damages, treble damages pursuant to
15 U.S.C. § 1117(a), and punitive damages pursuant to New York common law.
Bumble Bee has moved for a preliminary injunction and a factual
hearing was held at which testimony was adduced and exhibits
admitted into evidence. Because Sally Sherman is in fact using
Bumble Bee tuna, and because setting forth that fact on the
containers as currently distributed is neither deceptive nor
likely to cause confusion, plaintiff has not shown a likelihood
of success on the merits. Accordingly, plaintiff's motion for a
preliminary injunction is denied.
Bumble Bee is a leading provider of tuna in the United States
and owns several well-established and widely recognized
trademarks under which it has marketed its products since 1910.
Bumble Bee has created a Quality Assurance Program by which it
authorizes tuna salad processing companies to manufacture and
market tuna salad using its products and bearing its marks.
At the end of 2002, Bumble Bee and Sally Sherman discussed the
possibility that Sally Sherman would become a participant in the
Quality Assurance Program, thereby allowing Sally Sherman to use
the Bumble Bee mark on its tuna salad. As part of that
application process, Sally Sherman completed and passed a Quality
Assurance Survey designed to screen potential participants in the Quality Assurance Program. As the next step
in the application process, Bumble Bee then scheduled an onsite
inspection at Sally Sherman's facilities, but Sally Sherman
withdrew its application one week later.
Sally Sherman purchased a "substantial" amount of Bumble Bee
tuna in 2003 "for use in making its tuna salad." (Zizis Aff. In
Opp. Mot. ¶ 6). In February 2004, Bumble Bee discovered that
Sally Sherman distributed to delicatessens and supermarkets its
five pound tubs of tuna salad, the lid of which stated: Sally
Sherman Tuna Salad (with the Sally Sherman logo); Made with 100%
Hellmann's Real Mayonnaise (with Hellmann's logo); Made with
Bumble Bee Tuna (without the Bumble Bee logo). (Compl. Ex. C;
Zizis Aff. In Opp. Mot. ¶ 6). Bumble Bee had never authorized
Sally Sherman to state "Made with Bumble Bee Tuna" on its lids. A
photocopy of the lid is attached to this Opinion and Order as
Appendix A. Extensive correspondence between Bumble Bee and Sally
Sherman ensued; defendant insisted it was making fair use of
Bumble Bee's name, triggering this litigation.
II. Preliminary Injunction Standard
The Lanham Act specifically authorizes injunctive relief to
preserve the integrity of trademark rights. 15 U.S.C. § 1116(a).
The relevant standard for cases involving claims of trademark
infringement and dilution is a familiar one: "A party seeking a
preliminary injunction must demonstrate (1) the likelihood of
irreparable injury in the absence of such an injunction, and (2)
either (a) likelihood of success on the merits or (b)
sufficiently serious questions going to the merits to make them a
fair ground for litigation plus a balance of hardships tipping
decidedly toward the party requesting the preliminary relief."
Federal Express Corp. v. Federal Espresso. Inc., 201 F.3d 168, 173 (2d Cir. 2000) (citing Genesee Brewing
Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997));
Home Box Office. Inc. v. Showtime/The Movie Channel Inc.,
832 F.2d 1311, 1314 (2d Cir. 1987)).
III. Bumblebee Is Not Likely to Succeed on the Merits
A. Defendant's Use of Plaintiff's Trademark to Announce the
Existence of Plaintiff's Component Product As An Ingredient ...