Amy's Ice Creams, Inc. v. Amy's Kitchen, Inc., Case No. A–13–CA–449–SS.

• Decision Date: 08 October 2014
• Docket Number: Case No. A–13–CA–449–SS.
• Citation: 60 F.Supp.3d 738
• Parties: AMY'S ICE CREAMS, INC., Plaintiff, v. AMY'S KITCHEN, INC., Defendant.
• Court: U.S. District Court — Western District of Texas

60 F.Supp.3d 738

AMY'S ICE CREAMS, INC., Plaintiff
v.
AMY'S KITCHEN, INC., Defendant.

Case No. A–13–CA–449–SS.

United States District Court, W.D. Texas, Austin Division.

Signed Oct. 8, 2014.

60 F.Supp.3d 741

Jered E. Matthysse, Stephen P. Meleen, Wendy C. Larson, Pirkey Barber LLP, Austin, TX, for Plaintiff.

Jedediah Wakefield, Sean S. Wikner, Fenwick & West LLP, San Francisco, CA, Katherine Patrice Chiarello, Ratliff Law Firm, PLLC, Austin, TX, for Defendant.

ORDER

SAM SPARKS, District Judge.

BE IT REMEMBERED on the 30th day of September, 2014, the Court held a hearing in the above-styled cause, and the parties appeared by and through counsel. Before the Court are Defendant Amy's Kitchen, Inc.'s Motion to Exclude Plaintiff Amy's Ice Creams, Inc.'s Untimely Lost Royalty Theory of Damages, the Expert Testimony of Amelia Simmons, and Sanctions [# 36], Plaintiff's Response [# 42], and Defendant's Reply [# 52]; Defendant's Motion to Exclude Opinions and Testimony of Thomas O. Jukam and Isabella Cunningham [# 39], Plaintiff's Response [# 44], and Defendant's Reply [# 54]; Defendant's Motion for Summary Judgment [# 46], Plaintiff's Response [# 63], and Defendant's Reply [# 66]; and Plaintiff's Motion for Partial Summary Judgment [# 58], Defendant's Response [# 60], and Plaintiff's Reply [# 64]. Having considered the documents, the file as a whole, the governing law, and the parties' arguments at the hearing, the Court enters the following opinion and orders.

Background

This trademark case involves Amy's Ice Cream, Inc. (AIC) suing Amy's Kitchen, Inc. (AK) based primarily on AK's recent launch and sale of non-dairy frozen dessert, also known as “non-dairy ice cream.” The basic facts are AIC started in the early 1980s selling ice cream in storefronts in Austin, Texas. AIC has continued to grow and currently has about thirteen stores, all of which are in Austin except for one store in Houston and one store in San Antonio. AIC also sells other sweet foods like cookies and cakes. AIC has never obtained a federal trademark registration, but it did obtain a Texas trademark registration for its mark “AMY'S” covering “ice cream and other frozen confection” in 1986.

AK has been in business since the late 1980s and sells frozen foods through grocery stores. AK brands itself as a healthy frozen foods option selling mostly vegetarian and vegan items. For instance, their first product was a vegetable pot pie. AK did obtain federal trademark registrations in 1994 for the mark “AMY'S” and “AMY'S KITCHEN” for some of their offerings. They have since obtained five more federal registrations as they have expanded their products.

Typically, AK has sold frozen meal options, but they have at various points experimented with “sweet food” products. Since 1990, AK has sold an apple pie and has continued offering this product since. Other examples of sweet food offerings over the years roughly covering 1990 to 2008 include: (1) the apple pie since 1990; (2) in 1993, AK offered a whole meal which included an apple crisp dessert; (3) in 1994, AK offered a line of frozen cakes; (4) starting in 2000, AK offered a “toaster pop” which has been marketed as both a breakfast item and a dessert item; and (5) in 2008, AK offered a line of organic cakes. Some of these product lines were relatively short-lived while others, like the apple pie and toaster pop, have been a consistently produced item.

60 F.Supp.3d 742

Then, starting in 2008, AK made a concerted push to move more clearly into the dessert foods market. AK has added gluten-free cookies, candy bars, gluten-free brownies, gluten-free biscotti, and—most importantly to this case—non-dairy frozen dessert. The meaning of “non-dairy frozen dessert” is somewhat disputed by the parties. As the Court understands the term at this point in time, non-dairy frozen dessert is an alternative to ice cream, but it is not actually ice cream. Consumers might choose non-dairy frozen dessert for health reasons or dietary restrictions. Nevertheless, it is often referred to, and marketed as, “non-dairy ice cream” and sold in the ice cream section of grocery stores. AK's activity since 2008 has been the source of rising tensions between AIC and AK.

In September 2010, AIC filed a federal trademark application for “AMY'S ICE CREAMS,” to cover “ice cream” (since removed), “shirts,” and restaurant services featuring ice cream, fruit ice, candy, chocolates, and beverages; “catering.” In January 2011, AK opposed AIC's application. In June 2011, AK filed federal applications for the marks “AMY'S” and “AMY'S KITCHEN” covering “candy bars” and “cookies.” In October 2011, AIC contacted AK regarding the parties' respective trademark rights and looking to resolve the parties' issues. They were apparently unable to resolve their problems, and as AK continued to expand its dessert offerings, AIC decided to file a lawsuit in May 2013. In August 2013, AIC renewed an application for “AMY'S ICE CREAMS” for “ice cream.” Since AIC initiated the lawsuit, AK has taken the non-dairy frozen dessert to market. AK has presented evidence it has discontinued sales of the non-dairy frozen dessert in the greater Austin area as of July 2014. See Def.'s Resp. [# 60–10], Ex. D (Chipman Deck), ¶ 4.

AIC has asserted the following causes of action:

(1) Trademark infringement under Texas law;

(2) Common law trademark infringement;

(3) Federal unfair competition under Section 43(a) of the Lanham Act;

(4) Common law unfair competition;

(5) Dilution under Texas law;

(6) Unjust enrichment;

(7) Declaration that AIC is entitled to federal registration of its “AMY'S” marks; and

(8) Refusal of AK's registrations.

Am. Compl. [# 13], at 6–8.

AK has moved for summary judgment, and AIC has moved for partial summary judgment. In addition, AK has also filed two motions to exclude. The parties have fully briefed the motions, and the Court now addresses them in anticipation of this case's trial date in the month of April 2015.

Analysis

I. Motions for Summary Judgment

A. Legal Standard

Summary judgment shall be rendered when the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine dispute as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a) ; Celotex Corp. v. Catrett, 477 U.S. 317, 323–25, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; Washburn v. Harvey, 504 F.3d 505, 508 (5th Cir.2007). A dispute regarding a material fact is “genuine” if the evidence is such that a reasonable jury could return a verdict in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). When ruling on a motion for summary

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judgment, the court is required to view all inferences drawn from the factual record in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; Washburn, 504 F.3d at 508. Further, a court “may not make credibility determinations or weigh the evidence” in ruling on a motion for summary judgment. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000) ; Anderson, 477 U.S. at 254–55, 106 S.Ct. 2505.

Once the moving party has made an initial showing that there is no evidence to support the nonmoving party's case, the party opposing the motion must come forward with competent summary judgment evidence of the existence of a genuine fact issue. Matsushita, 475 U.S. at 586, 106 S.Ct. 1348. Mere conclusory allegations are not competent summary judgment evidence, and thus are insufficient to defeat a motion for summary judgment. Turner v. Baylor Richardson Med. Ctr., 476 F.3d 337, 343 (5th Cir.2007). Unsubstantiated assertions, improbable inferences, and unsupported speculation are not competent summary judgment evidence. Id. The party opposing summary judgment is required to identify specific evidence in the record and to articulate the precise manner in which that evidence supports his claim. Adams v. Travelers Indent. Co. of Conn., 465 F.3d 156, 164 (5th Cir.2006). Rule 56 does not impose a duty on the court to “sift through the record in search of evidence” to support the nonmovant's opposition to the motion for summary judgment. Id. “Only disputes over facts that might affect the outcome of the suit under the governing laws will properly preclude the entry of summary judgment.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Disputed fact issues that are “irrelevant and unnecessary” will not be considered by a court in ruling on a summary judgment motion. Id. If the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to its case and on which it will bear the burden of proof...