Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.


July 20, 2004.

BUMBLE BEE SEAFOODS, L.L.C.; a Delaware corporation Plaintiff,

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.


  I. Background

  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 ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.