The Fifth Circuit entered a judgment on Monday in favor of Kraft Heinz in a trademark lawsuit filed by Dennis Perry against Kraft’s “Mayochup.” This decision affirmed the judgment from the Eastern District of Louisiana in June 2020, ruling that Kraft’s product would not cause confusion with the plaintiff’s product, but vacated its cancellation of the plaintiff’s trademark.
H.J. Heinz Company Brands L.L.C. and Kraft Heinz Foods Company began selling Mayochup in 2016 in the Middle East, and brought the product to the United States in 2018. Perry has been selling “Metchup” since 2010 and has owned a trademark for Metchup since 2011, according to the opinion.
Metchup, which is a mixture of ketchup and mayonnaise, is similar in ingredients to Mayochup. Perry’s product mixes Wal-Mart store brand ketchup and mayonnaise in equal parts and has been sold from the reception area of a hotel in Louisiana next to his used car dealership. Reportedly, the plaintiff produced between 50 and 60 bottles of Metchup and has made a profit of about $50. Although the plaintiff owns metchup.com, it has not been used to sell Metchup, but instead links to a Metchup Facebook page.
Although the appellate court opinion said that Heinz did make a mock-up bottle with the name Metchup during an online naming contest, it did not sell any products as Metchup, but has only used the name Mayochup for sales. The district court dismissed Perry’s allegations, deciding that there was not a likelihood of confusion, however, the district court also cancelled the trademark registration for Metchup, because the plaintiff did not sufficiently prove that he was still using the trademark in commerce.
“We agree that there is little chance that a consumer would confuse Mr. Perry’s Metchup with Heinz’s Mayochup or be confused by Heinz’s use of Metchup in advertising, so we affirm the district court’s dismissal of Mr. Perry’s claims against Heinz,” the Fifth Circuit said. “But because Mr. Perry sold some Metchup and testified that he hoped to sell more, a finder of fact should determine whether his incontestable trademark should be deemed abandoned and canceled.”
The opinion reasoned that because the bottles look significantly different, and “trademarked words cannot be isolated from the labels on which they appear,” consumers would not be confused between the bottles of Metchup and Mayochup. Additionally, the plaintiffs’ sales have been targeted to hotel visitors and customers at his used car lot, and thus there is not a market overlap between the two parties. The judges also explained that because of the lack of advertising for Metchup, it was reasonable for Heinz to assume that the trademark was not currently in use, although the court determined that it had not actually been abandoned.
The plaintiff is represented by Tolar Harrigan & Morris, and Heinz is represented by Holland & Knight. The matter is being sent back to the district court for further proceedings.
