Pair of Amy's Clash in Texas Over Frozen Dessert Trademark

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By Tamlin Bason

Oct. 10 — Neither party is entitled to summary judgment on trademark infringement claims asserted by Amy's Ice Creams Inc. against Amy's Kitchen Inc., the U.S. District Court for the Western District of Texas ruled Oct. 8.

Both the California-based Amy's Kitchen and the Texas-based Amy's Ice Creams have been operating since the 1980s. And for most of that time their products did not overlap: Amy's Kitchen specialized in vegan and vegetarian frozen foods that were sold to grocery stores and Amy's Ice Creams only sold products out of its handful of locations in and around Austin, Texas.

In 2008, however, Amy's Kitchen made a push into the frozen dessert market. One of those new products, a non-dairy frozen dessert, sparked this lawsuit.

Both sides moved for summary judgment on Amy's Ice Creams' state law and common law trademark infringement claims. The court, however, determined that there were genuine issues of fact with respect to nearly all of the likelihood of confusion factors, particularly with regards to the strength of the Amy's Ice Creams mark.

TTAB Oppositions Support Jurisdiction Here

Amy's Ice Creams has a state trademark registration but no federal registration. Amy's Kitchen has a number of federal registrations, but none of them were at issue in the dispute.

Amy's Ice Creams, however, filed an application to register “Amy's Ice Creams” with the Patent and Trademark Office. Amy's Kitchen opposed that application and also has pending applications of its own—opposed by Amy's Ice Creams—trying to register two additional marks for use on cookies and candy bars.

The complaint in this case included a request for a declaration that Amy's Ice Creams was entitled to federal registration of that contested mark and an order that Amy's Kitchen's applications be refused.

Amy's Kitchen argued that the court lacked jurisdiction over those claims and that its existing registrations, including one that covered frozen apple pie, were “insufficiently related to the pending applications to allow the Court to rule on the party's registration rights.”

“In order for the Court to exercise jurisdiction over pending applications, one of the parties must have a registered trademark which has a sufficient nexus with the dispute over the pending applications,” the court noted. It then found that nexus satisfied here.

“[Amy's Kitchen]'s applications are essentially an attempt to expand their registered marks to new products, and [Amy's Ice Creams]' applications are in direct conflict with [Amy's Kitchen]'s applications,” Judge Sam Sparks said.

Moreover, the court noted that, in its opposition to the Amy's Ice Creams application, Amy's Kitchen asserted a likelihood of confusion argument based on its own registrations.

“Therefore, [Amy's Kitchen]'s utilization of its registered trademarks, both offensively and defensively, reflects a nexus between these registered marks and the parties' applications sufficient to give this Court jurisdiction to determine the parties' respective rights to registration,” the court said.

Mark is Descriptive, Secondary Meaning Unclear

The court rejected Amy's Ice Creams' argument that “Amy's” was an inherently distinctive term. Rather, the mark is descriptive in that it describes something as belonging to Amy. However, though descriptive, the court noted that the mark could still be protected if secondary meaning were found.

The court, however, was unable to determine on the record before it whether Amy's Ice Creams had acquired secondary meaning in the relevant geographic area.

“Both parties have presented credible, competing evidence” on this issue, the court said, “creating numerous genuine issues of material fact and making resolution of the dispute not suitable for summary judgment.”

Geographic Restriction?

The parties, and Amy's Kitchen in particular, appear to be angling for a result that restricts the areas in which each party can use its respective Amy's mark.

For instance, Amy's Kitchen “has presented evidence it has discontinued sales of the non-dairy frozen desert in the greater Austin area as of July 2014,” the court said.

Amy's Ice Creams was represented by Jered E. Matthysse of Pirkey Barber PLLC, Austin, Texas. Amy's Kitchen was represented by Jedediah Wakefield of Fenwick & West LLP, San Francisco.

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text at http://www.bloomberglaw.com/public/document/Amys_Ice_Creams_Inc_v_Amys_Kitchen_Inc_No_113cv00449SS_2014_BL_28/1.