Gerawan Farming, Inc. v. Prima Bella Produce, Inc., CASE NO. CV F 10-0148 LJO JLT
| Decision Date | 02 August 2011 |
| Docket Number | Doc. 126,Doc. 112,CASE NO. CV F 10-0148 LJO JLT |
| Parties | GERAWAN FARMING, INC., Plaintiff, v. PRIMA BELLA PRODUCE, INC., Defendant. |
| Court | U.S. District Court — Eastern District of California |
Defendant Prima Bella Produce, Inc. ("PBP") seeks summary judgment on plaintiff Gerawan Farming, Inc.'s ("Gerawan's") federal and common law trademark infringement, dilution and unfair competition claims. Gerawan contends material factual disputes exist on all grounds upon which PBP seeks summary judgment, in particular, whether there is a likelihood of confusion among PBP's and Gerawan's trademarks. This Court considered PBP's summary judgment motion on the record without a hearing, pursuant to Local Rule 230(g).1 For the reasons discussed below, this Court DENIES PBP summary judgment.
This is a dispute over Gerawan's use of its "Prima" trademarks and PBP's use of its "Prima Bella" trademarks.
Family owned and operated since 1938, Gerawan is based in Sanger, California and describes itself as "the nation's largest grower of peaches, plums and nectarines and among the leaders in table grapes." Gerawan sells its produce in grocery and warehouse stores, fruit and vegetable stands, and similar retail outlets, and its customers include Costco, Safeway and Wal-Mart. Gerawan owns 10 registered U.S. trademarks and claims to have used its Prima trademarks as a brand for its fresh produce in interstate commerce since early 1970.
PBP is based in Tracy, California and describes itself as a "leading supplier" of "fresh, year round sweet corn" in the United States and "the largest packaged sweet corn producer and seller in the Western United States." PBP packages and sells fresh sweet corn that is distributed to retail outlets, including Costco, Safeway and Wal-Mart, as well as food service companies.2 PBP's recent retail sales are in the millions of dollars. PBP uses Prima Bella trademarks.
Gerawan claims that PBP has infringed upon and diluted Gerawan's Prima trademarks. In this action, Gerwan seeks to enjoin PBP's infringement and dilution of Gerawan's Prima trademarks and to recover damages for PBP's alleged infringement, dilution and unfair trade practices. PBP seeks summary judgment in the absence of evidence of a likelihood of confusion between Gerawan's and PBP's trademarks and dilution caused by PBP's trademarks.
Gerawan owns U.S. Trademark Reg. No. 1,441,378 for Prima in standard character form ("Prima word mark"). On April 1, 1985, Gerawan applied to register the Prima word mark for "fresh fruits and vegetables, namely, table grapes; peaches; plums; nectarines; lettuce; cauliflower; kiwis; persimmons; rapini; broccoli; bok choy; apricots; cantaloupe; escarole; honeydew; crenshaw; red leaf; green leaf; boston; red cabbage; green cabbage; and nappa." The U.S. Patent and Trademark Office ("USPTO")issued a registration for the Prima word mark on June 2, 1987.
In November 2007, Gerawan submitted a Combined Declaration of Use in Commerce and Application for Renewal of Registration of Mark under Sections 8 and 9 (15 U.S.C. §§ 1058, 1059) to renew registration for the Prima work mark.
Gerawan owns U.S. Trademark Reg. No. 3,592,505 for Prima in a stylized form ("Prima logo"). On November 28, 2007, Gerawan applied to register the Prima logo for "fresh fruit." The USPTO issued a registration for the Prima logo on March 17, 2009.
Gerawan also owns eight other trademarks containing "Prima" for its other goods and services, including pallets and computer services.3
PBP owns U.S. Trademark Reg. No. 3,404,125 for Prima Bella in standard character form ("Prima Bella work mark"). On October 3, 2006, PBP applied to register the Prima Bella work mark for "fresh vegetables." The USPTO issued registration for the Prima Bella word mark on April 1, 2008.
PBP owns U.S. Trademark Reg. No. 3,404,126 for Prima Bella in stylized form ("Prima Bella logo"). On October 4, 2007, PBP applied to register the Prima Bella logo for "fresh vegetables." The USPTO issued registration for the Prima Bella logo on April 1, 2008.4
On November 4, 2003, PBP applied to register Glori Ann in standard character form ("Glori Ann word mark") for "fresh vegetables."5 On December 21, 2004, the USPTO issued U.S. Trademark Reg. No. 2,913,100 for the Glori Ann word mark.
Gerawan's principals include Ray Gerawan and his sons Dan and Mike Gerawan. Gerawan datesback to 1938, when Ray Gerawan's parents began farming in California.
In the 1960s, Ray Gerawan came up with the brand name "Prima." In his deposition, Ray Gerawan testified that he was "[l]ooking for something simple, two syllables, sounded good, it looked good." Ray Gerawan came up with Prima by himself.
PBP's president is Mark Bacchetti ("Mr. Bacchetti"), and its secretary/treasurer is Mary Bacchetti ("Ms. Bacchetti"), Mr. Bacchetti's wife. PBP is closely held. A related company, Bella Mia Management, performs PBP's payroll services.
Mr. Bacchetti's parents Bert and Gloria Ann Bacchetti engaged in California farming operations. Bert Bacchetti Farms began as a dairy and farming business in the 1950s and incorporated in 1968. Mr. Bacchetti joined his father as a full-time employee of Bert Bacchetti Farms in 1976.
Before PBP began doing business in 2002, Mr. and Ms. Bacchetti formed and operated Marca Bella Farms along with Mr. Bacchetti's father. Marca Bella Farms began farming and packing operations in 1996. PBP notes that Marca Bella Farms was primarily devoted to growing and distribution of asparagus and sold asparagus using a Bella trademark.
Mr. Bacchetti first began growing and distributing fresh sweet corn as a small part of Marca Bella Farms' operations. Marca Bella Farms ceased growing and distributing corn products in the early to mid-2000s.
In 2001, Ms. Bacchetti came up with the name Prima Bella Produce for the company, PBP, that she and Mr. Bacchetti wanted to form to grow and sell packaged fresh sweet corn. Ms. Bacchetti desired to include "Bella" to carry on the lineage of related companies. In her deposition, Ms. Bacchetti testified that to create the Prima Bella Produce name, Ms. Bacchetti found "Prima" and believed that it sounded good as "Prima Bella." Ms. Bacchetti consulted an outside accountant who informed her that "Prima Bella" was not used as a California corporate name. Mr. and Ms. Bacchetti decided to adopt Prima Bella as the tradename for PBP. Mr. and Mrs. Bacchetti have no knowledge of a trademark search for Prima Bella prior to PBP's use of it. Mr. Bacchetti testified thathe considers Prima Bella as PBP's brand.
Prior to PBP's formation, Marca Bella Farms used the Glori Ann word mark for sales of packaged fresh sweet corn products. With Marca Bella Farms' cessation of growing and distributing sweet corn, only PBP sells sweet corn using the Glori Ann word mark.
When PBP applied to register the Glori Ann word mark in November 2003, PBP included a declaration from Gloria Ann Bacchetti, Mr. Bacchetti's mother, since the trademark is based on her name. PBP notes that trademark registration rules require such declaration when a trademark is based on a family name of a living person.
In some retail outlets, PBP's packaged sweet corn is sold in refrigerated sections known as a "wet rack." Grocery stores place PBP's fresh sweet corn products in the wet rack next to loose corn. PBP prefers placement of its packaged sweet corn in upper sections of the wet rack to keep sprinklers off the sweet corn products and to present at consumers' eye level.
During recent years, Gerawan's production and sales have been limited to stone fruit6 and grapes. Dan Gerawan testified that Gerawan and its entities have "been out of vegetables . . . [p]robably 30 years even." Gerawan's website and promotional materials do not mention Gerawan's farming or sales of vegetable produce. Produced Gerawan records disclose production and sale of stone fruit and table grapes since 1980, but no vegetable sales.
In May 1993, Dan Gerawan signed a Combined Affidavit Under Sections 8 and 15 in which he states that the Prima mark "has been in continuous use in interstate commerce for five consecutive years from the date of registration or the date of publication under Section 12(c) to present, on each of the following goods stated in the registration fresh fruits and vegetables, namely, table grapes; peaches; plums; nectarines; lettuce; cauliflower; kiwis; persimmons; rapini; broccoli; bok choy; apricots; cantaloupe; escarole; honeydew; crenshaw; red leaf; green leaf; boston; red cabbage; green cabbage; and nappa." In his deposition, Dan Gerawan acknowledged that the affidavit was incorrect with respect to vegetables.In November 2007, Gerawan submitted a Combined Declaration of Use in Commerce and Application for Renewal ofMark under Sections 8 and 9 (15 U.S.C. §§ 1058 & 1059) to request deletion from the registration of all vegetable produce and certain fruit produce. In February 2009, Gerawan's trademark counsel authorized the USPTO to amend the Prima logo to delete "and vegetables." In connection with the Prima logo's statement of use, Gerawan informed the USPTO that the "applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) photograph of a container of goods." The specimen provided was a box with the "Prima Gattie" peach variety designation and the Prima logo. PBP notes that federal regulations require inclusion of the applicable fruit variety name on fruit packages and containers.
...
To continue reading
Request your trial