Dennis Perry, plaintiff and appellant in a 5th Circuit trademark lawsuit against Kraft Heinz, filed a petition on Monday asking the appellate court to have an en banc rehearing after it ruled in favor of Kraft Heinz affirming the Eastern District of Louisiana decision. The plaintiff argued that precedent was not followed and overruling the appellate court’s precedent should not happen without an en banc review.
The Fifth Circuit ruled on April 12 that the Mayochup product produced by the defendants, H.J. Heinz Company Brands LLC and Kraft Heinz Foods Company, would not cause consumer confusion with the plaintiffs’ Metchup product, which is a mix of Mayonnaise and Ketchup similar to Mayochup.
According to the legal filings, Perry began manufacturing Metchup in 2010 and has sold it locally at his car shop and a neighboring hotel. Although he has a Facebook page and website, he has not yet sold a bottle of Metchup over the internet. Because the products did not have a significant overlap in consumers, the court ruled in favor of Kraft Heinz, but did allow Perry to keep his trademark for Metchup deciding that it had not been abandoned.
The plaintiff alleged in Monday’s petition that the en banc hearing should be held because “the Panel’s decision conflicts with well-established Fifth Circuit precedent, as well as controlling law from the United States Supreme Court.”
Perry explained that the panel acknowledged that the Kraft Heinz trademark was confusingly similar and that the goods were the same, but continued to dismiss his trademark claims despite the analysis of likelihood of confusion was in the plaintiff’s favor. He alleged that the panel “substituted its judgment for that of the jury in finding that Appellee’s use of identical and confusingly similar marks in connection with identical products could not, as a matter of law, amount to trademark infringement or counterfeiting.”
“If the Panel intended to overrule established Fifth Circuit precedent on likelihood of confusion and upend trademark law, then this should only be done following en banc review,” the petition said.
The plaintiff also alleged that the panel made a determination of his intent, which according to precedent was inappropriate in the circumstance.
The plaintiff is represented by Tolar Harrigan & Morris LLC. Heinz is represented by Holland & Knight.
