United States District Court, S.D. Florida
ORDER CLARIFYING APRIL 19, 2017 RULING ON THE
PARTIES' MOTIONS FOR SUMMARY JUDGMENT
G. COOKE United States District Judge.
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).
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).
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
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
(Id. at 30-31).
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.
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.
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.” (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.
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);
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