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Badia Spices, Inc. v. Gel Spice Company, Inc.

United States District Court, S.D. Florida

May 15, 2017

BADIA SPICES, INC., a Florida corporation, Plaintiff,
v.
GEL SPICE COMPANY, INC., a New Jersey corporation, Defendant.

          ORDER CLARIFYING APRIL 19, 2017 RULING ON THE PARTIES' MOTIONS FOR SUMMARY JUDGMENT

          MARCIA G. COOKE United States District Judge.

         THIS MATTER is before the Court on (1) Plaintiff Badia Spices, Inc.'s (“Badia”) Supplemental Memorandum of Law in Support of Granting Summary Judgment in Favor of Plaintiff on Defendant's Affirmative Defenses and Counterclaims Based on Genericness (ECF No. 112), and (2) Defendant Gel Spice Company, Inc.'s (“Gel”) Response to Plaintiff's Supplemental Memorandum of Law Regarding Defendant's Affirmative Defenses and Counterclaims Based on Genericness (ECF No. 114).

         DISCUSSION

         On September 13, 2016, Gel moved for summary judgment on Badia's trademark infringement claims on grounds that “Complete Seasoning” and “Sazon Completa” are generic and not entitled to trademark protection, or, alternatively, that there is no likelihood of confusion between Badia's marks and Gel's “Supreme Sazon Complete Mix Seasoning.” (ECF No. 50). Badia then cross-moved for summary judgment. (ECF No. 52). I heard oral argument on April 19, 2017 (the “Hearing”), after which I denied both parties' motions from the bench. (ECF No. 110 at 32).

         In so ruling, I made several observations regarding the issues in this case. Specifically, I stated:

Everyone agrees about the factors that I have to use in deciding summary judgment on this case and that's the seven factors that the 11th Circuit has enunciated: the strength of the mark, the similarity of the mark, the similarity of the product that the marks represent, the similarity of the parties' retail outlet and customers, the similarity of advertising, and defendant's intent and actual confusion.
Now, in this case, I think - I don't want to say that the Defendants agree, but I think the marketplace would well out that Badia does have the stronger mark in this case. Badia argues that Gel's mark is identical. I'm not going to say that it's identical, but there are - there is evidence that it's sufficiently similar to the Badia mark. And the parties admit that the products are identical or closely related. And they go down the same similarity to parties' trade channels and customers. . . .
I don't think that I have sufficient evidence at this time for the remaining factors, the similarity of advertising, Gel's intent, or the issue of actual confusion.

(Id. at 30-31).

         At the April 26, 2017 calendar call, Badia suggested it would be helpful for the purposes of settlement and/or trial preparation if I provided “clarification” of my April 19, 2017 ruling, specifically as to whether “the genericness claim is out” or is still an open issue for trial (ECF No. 111 at 2-3). I ordered the parties each to provide a “brief outline of the issue, ” but cautioned them, “unless you see a solid error of law in their filing that you think somehow might misapprise the Court on how to proceed, I should have enough . . . to go forward.” (Id. at 4). The parties have filed their respective briefs, which I have reviewed along with the record and relevant legal authorities.

         Badia contends “it is implicit in the Court's evaluation of the likelihood of confusion factors that the Defendant's affirmative defenses and counterclaims pertaining to genericness must fail as a matter of law.” (ECF No. 112 at 2). Accordingly, Badia concludes, “the Court's rulings with respect to the relevant likelihood of confusion factors, coupled with the Court's acknowledgement of the strength of Badia's Marks during the April 19 summary judgment hearing, compel only one conclusion: that Badia is entitled to summary judgment with respect to the Defendant's alleged counterclaims and affirmative defenses on the genericness issue.” (ECF No. 112 at 2). In essence, Badia asserts that my statements at the Hearing were inconsistent with my denial of its motion for summary judgment as to Gel's defenses and counterclaims pertaining to genericness.

         Badia misconstrues my statements at the Hearing. My ruling on the parties' motions for summary judgment were unambiguous: “Defendant and Counterclaimant Gel Spice Company's motion for summary judgment, ECF No. 50, is denied, and Plaintiff's motion No. 52 is denied.”[1] (ECF No. 110 at 32). The other statements I made simply reflected my view of the relative strengths and weaknesses of the parties' respective cases, and attempted to focus the parties on what I consider to be the most important issues for trial. They were not, as Badia suggests, separate dispositive rulings.

         To be clear, the genericness (or strength) of Badia's marks is still an open issue for trial. As set forth below, it is relevant both to the validity of the marks, and to whether Gel's use of the contested marks is likely to cause confusion. See 15 U.S.C § 1114(1)(a); Dieter v. B & H Industries of ...


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