No Injunction in Cutting Edge Trademark Dispute Between Fertilizer, Seed Companies

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By Tamlin Bason

Oct. 22 — Cutting Edge Solutions LLC was unable to demonstrate that it had any protectable trademark interest in the “Cutting Edge Solutions” mark, let alone that it was entitled to a preliminary injunction against another company's use of the “Cutting Edge” mark, the U.S. District Court for the Northern District of California ruled Oct. 20.

The problem for Cutting Edge Solutions (CES), a leading manufacturer of plant fertilizers founded in 2001, was that it failed to introduce evidence demonstrating that it had ever used the “Cutting Edge” mark in commerce prior to the defendant's sale of “Cutting Edge” grass seed in 2011.

CES did introduce one example of a label that featured the “Cutting Edge” mark that was approved by the California Department of Food and Agriculture in 2002, “but there is no evidence that this label was actually used in commerce,” the court said. The only other label in evidence demonstrating use of the mark in commerce was from 2013 and so was after the defendant was already using the mark.

Moreover, the court noted that the defendant had submitted evidence “that CES's actual use of Cutting Edge Solutions on its products (as shown by the approved 2002 label and on CES's current labels) is that of a trade name: Cutting Edge Solutions, LLC.”

“On this record, I cannot adequately determine how CES was using ‘Cutting Edge Solutions, LLC' on its actual labels through 2011,” Judge William H. Orrick said. “This issue, therefore, is not dispositive on the question whether CES has a protectable interest in the mark as a trademark, but weighs against issuing a preliminary injunction.”

Ultimately, the fact that CES could not demonstrate a likelihood of success on the merits of its trademark infringement claim also weighed against issuance of a preliminary injunction.

Cutting Edge Solutions was represented by Laura L. Chapman of Sheppard Mullin Richter & Hampton LLP, San Francisco. The defendant, Sustainable Low Maintenance Grass LLC, was represented by Kenneth R. Berman of Nutter McClennen & Fish LLP, Boston.

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