Carnival Brand Seafood Co. v. Carnival Brands

• Decision Date: 03 September 1999
• Docket Number: No. 98-4126,98-4126
• Citation: 187 F.3d 1307
• Parties: (11th Cir. 1999) CARNIVAL BRAND SEAFOOD COMPANY, Plaintiff-Appellant, v. CARNIVAL BRANDS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1307

187 F.3d 1307 (11th Cir. 1999)

CARNIVAL BRAND SEAFOOD COMPANY, Plaintiff-Appellant, v. CARNIVAL BRANDS, INC., Defendant-Appellee.

No. 98-4126.

United States Court of Appeals Eleventh Circuit.

Sept. 3, 1999.

Appeal from the United States District Court for the Southern District of Florida (no. 97-8273-CV-JL), Joan A. Lenard, Judge.

Before ANDERSON, Chief Judge, MARCUS, Circuit Judge, and MILLS^*, Senior District Judge.

ANDERSON, Chief Judge:

Carnival Brand Seafood Company ("CBSC") brought this trademark infringement action against Carnival Brands, Inc. ("CBI"). The district court granted summary judgment for defendant CBI on the ground that CBSC had failed to raise a genuine issue of material fact with respect to the likelihood of confusion to the extent of the products as to which CBSC had priority. Plaintiff CBSC now appeals.

I. FACTS

Beginning in 1980, Honduran company Mariscos de Bahia, S.A. de C.V. ("Mariscos") began using the brand name "CARNIVAL" in connection with the sale of fresh and frozen boxed raw shrimp. Mariscos sold shrimp to various wholesalers and retailers, including food suppliers and restaurants, through Miami distributor Ludwig Shrimp Co. Ltd. ("Ludwig"). CBSC incorporated as a Delaware corporation (with its headquarters in Florida) in March 1996, and Mariscos assigned to CBSC all of its rights in the CARNIVAL mark on October 1, 1996 ("Mariscos Assignment"). CBSC registered the CARNIVAL mark with the Patent & Trademark Office. CBSC then expanded its CARNIVAL product line to include not merely raw shrimp, but also pre-packaged entrees such as bacon-wrapped shrimp, shrimp scampi, grouper, red snapper, Caribbean snapper marinated in lemon pepper sauce, mahi mahi fillets, yellow fin tuna, orange roughy, halibut, lobster tails, and "surf and turf" (lobster tails with beef tenderloin).

In addition to the Mariscos Assignment, CBSC also received an assignment of rights in the CARNIVAL mark from Hi-Seas of Dulac, Inc. ("Hi-Seas"), a Louisiana corporation, on April 17, 1997 ("Hi-Seas Assignment"). Hi-Seas had begun using the mark "CARNIVAL!" in June 1992 in connection with the sale of fresh frozen shrimp, cooked shrimp, breaded shrimp, cooked crawfish, and breaded alligator. Following the Mariscos Assignment, CBSC sued Hi-Seas for trademark infringement. As part of a settlement of that litigation, Hi-Seas executed the Hi-Seas Assignment.

Defendant CBI is a New Orleans, Louisiana company that is engaged in the business of selling prepared Creole or Cajun-type food products. CBI, either by itself or as a sole proprietorship prior to its incorporation,¹ has been engaged in this business since 1990. The original proprietorship sold only chicken gumbo and seafood gumbo, using the brand name "CARNIVAL" or "CARNIVAL CAJUN CLASSICS." In December 1992, CBI incorporated and expanded into other pre-cooked seafood products such as shrimp cakes, crawfish cakes, lobster cakes, and crab cakes. CBI now sells an array of pre-cooked, pre-packaged, ready-to-eat seafood products and sauces with a Cajun or Creole theme; these products are available in grocery stores for retail purchase. CBI has promoted its products through a web page on the Internet and on the home shopping network cable television station QVC.

Plaintiff CBSC filed the instant action against defendant CBI on April 18, 1997, alleging that by using the CARNIVAL mark, CBI infringed upon CBSC's trademark. The complaint brought one count of statutory trademark infringement under the Lanham Act, 15 U.S.C. 1114, one count of false designation of origin and unfair competition under the Lanham Act, 15 U.S.C. 1125(a), and one count of common law trademark infringement. Plaintiff later filed a motion for a preliminary injunction. The district court, finding no genuine issue of material fact as to the likelihood of confusion between the sources of plaintiff's and defendant's products, granted summary judgment for defendant CBI, and denied the motion for a preliminary injunction as moot.

II. STANDARD OF REVIEW

We review the district court's grant of summary judgment de novo, with all facts and reasonable inferences therefrom reviewed in the light most favorable to the nonmoving party. Hale v. Tallapoosa County, 50 F.3d 1579, 1581 (11th Cir.1995). Summary judgment was due to be granted only if the forecast of evidence before the district court showed that there was no genuine issue as to any material fact and that the moving party, i.e., CBI, was entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c).

III. ANALYSIS

To prevail on a trademark infringement claim, a plaintiff must show (1) that its mark has priority and (2) that the defendant's mark is likely to cause consumer confusion. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.1997) (citing Dieter v. B & H Indus. of S.W. Fla., Inc., 880 F.2d 322, 326 (11th Cir.1989), cert. denied, 498 U.S. 950, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990)). Plaintiff CBSC itself did not begin to use the CARNIVAL mark until at least as late as 1996. Defendant CBI, on the other hand, used the CARNIVAL mark (or some variation thereof)² beginning in 1990. Therefore, any priority that CBSC claims over CBI with respect to the CARNIVAL mark must have been derived from one of CBSC's predecessors in interest. Cf. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1511 (11th Cir.1984) (plaintiff's interest in trademark derived entirely from predecessor company that it had acquired); see generally 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 16:5, at 16-7 & n. 3 (1998) (explaining that an assignee of a trademark steps into the shoes of the assignor and that a company may "buy[ ] the trademark and associated good will of a company with an early priority date in order to pre-date the priority of a rival"). That is, it must rest on either the Mariscos Assignment or the Hi-Seas Assignment.³

A. The Mariscos Assignment

The Mariscos Assignment conveyed to CBSC any and all rights that Mariscos had gained from the use of the CARNIVAL mark in connection with Mariscos' sale of raw shrimp since 1980. In other words, if Mariscos would have had priority over CBI, then CBSC has priority over CBI as well because CBSC stepped into Mariscos' shoes. The issue for us to decide is whether CBI established beyond any genuine issue of material fact that it had priority over Mariscos, and thus over CBSC, with respect to the use of the CARNIVAL mark for processed seafood entrees and sauces of the type sold by CBI.

Mariscos was unquestionably the senior user with respect to raw shrimp. However, because Mariscos never produced or sold processed, ready-to-eat seafood entrees as did CBI, priority in these goods depends on the application of the "related use" or "natural expansion" theory. As we explained in Tally-Ho, Inc. v. Coast Community College District, 889 F.2d 1018 (11th Cir.1989),

The senior user's rights may extend into uses in "related" product or service markets (termed the "related goods" doctrine). Thus, an owner of a common law trademark may use its mark on related products or services and may enjoin a junior user's use of the mark on such related uses. The doctrine gives the trademark owner protection against the use of its mark on any product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner.

Id. at 1023 (citations and internal quotation marks omitted); see also Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1406 (3d Cir.1985) ("[O]nce one has established a common law trademark in a product, the prior use of that trademark will apply as well to the use of the same trademark on related products in ascertaining priority of use." (emphasis omitted)), cert. denied, 474 U.S. 920, 106 S.Ct. 249, 88 L.Ed.2d 257 (1985); May Dep't Stores Co. v. Prince, 200 U.S.P.Q. 803, 808-09 (T.T.A.B.1978) (senior user possesses rights in mark superior to those of "a subsequent user of the same or a similar mark for any goods which purchasers might reasonably be likely to assume emanate from [senior user] in the normal expansion of its business under the mark notwithstanding that the expansion to a particular product might be subsequent in time to that of another party"); see generally 2 McCarthy 16:5, at 16-7 ("When a senior user of a mark on product line A expands later into product line B and finds an intervening user, priority in product line B is determined by whether the expansion is 'natural' in that customers would have been confused as to source or affiliation at the time of the intervening user's appearance.").

On the other hand, "a trademark owner cannot by the normal expansion of business extend the use or registration of its mark to distinctly different goods or services not comprehended by its previous use ... where the result could be a conflict with valuable intervening rights established by another through extensive use ... of the same or similar mark for like or similar goods and services." American Stock Exchange, Inc. v. American Express Co., 207 U.S.P.Q. 356, 364 (T.T.A.B.1980). See, e.g., Physicians Formula Cosmetics, Inc. v. West Cabot Cosmetics, Inc., 857 F.2d 80, 82 n. 1 (2d Cir.1988) (defendant's prior use of mark on hard-bar soap did not extend to give defendant priority to use similar mark in connection with cosmetics and skin creams, and so intervening user with respect to cosmetics and skin creams had priority); Clark & Freeman Corp. v. Heartland Co. Ltd., 811 F.Supp. 137, 142 (S.D.N.Y.1993) (where plaintiff had senior rights to "HEARTLAND" mark with respect to women's boots, those rights did not extend to give plaintiff priority over defendant's intervening use of "HEARTLAND" with respect to shirts, sweaters, trousers, and jackets, because at the time the intervening use began, "there was no real likelihood...