“purest” is puffery and Himala- is too geographically descriptive to cause confusion

Sustainable Sourcing, LLC v. Brandstorm, Inc., 2016 WL
3064055, No. 12-cv-30093 (D. Mass. May 31, 2016)

The parties compete to sell Himalayan pink salt.  Sustainable Sourcing created an image showing
a box of its pink salt, surrounded by bowls of berries and salt.  “One of Defendants’ employees (not surprisingly,
no longer employed by them) foolishly copied the Image, mostly leaving the
photograph unchanged, but replacing Plaintiff’s product with a depiction of
Defendants’ product (the “Altered Image”). Defendants thereafter used the
Altered Image in their online and print catalogues.”  After this was discovered, Sustainable
Sourcing registered the image and sued; the court allowed further discovery to
figure out if there were any damages.


Sustainable Sourcing alleged that Brandstorm falsely claimed
that their Pakistani salt was from Tibet; the court denied summary judgment,
finding material issues of fact remained. 
Brandstorm counterclaimed, asserting trademark and false advertising
related claims.  Brandstorm uses the
brand name “HIMALANIA,” and have a registration for the word, but it only
covers fruits and snacks classes (International Classes 29, 31, and 32). Sustainable
Sourcing sells products under the brand name “HimalaSalt,” but without a
trademark registration. 

Sustainable Sourcing argued laches, since Brandstorm knew
since 2006, when Sustainable Sourcing entered the pink salt market, that its HimalaSalt
was competing with HIMALANIA, but didn’t pursue legal action until 2014.  The record didn’t justify summary judgment on
laches, given Brandstorm’s argument that it was justified in taking a
wait-and-see approach to assess market conditions before suing.

The court found confusion unlikely, given the geographic
descriptiveness of “Himala.”  “[B]ecause
the only overlap between the parties’ marks is the geographical reference to
the Himalayan mountains, this common feature is not likely to lead to
confusion. Indeed, the summary judgment record contains evidence of numerous
third parties that have registered trademarks covering products with the common
root ‘Himala,’ making it even less likely that there will be confusion.”  Also, the court, without explaining who
actually had use-based priority in the salt market, reasoned that the Brandstorm
registration didn’t protect salt.  Summary
judgment against Brandstorm for the word-based claim, but trade
dress/packaging-based claims survived because of disputed issues about the
overall commercial image of the products, “or whether recent changes to
Defendants’ packaging amount to abandonment of the registered mark,” an issue
for the jury.

Sustainable Sourcing did win summary judgment on the false
advertising counterclaim based on its tagline, “the purest salt on earth,” which
was mere puffery.

from Blogger http://ift.tt/1ZgFgRv

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