Maduka v. Tropical Naturals, Ltd.
| Decision Date | 10 September 2019 |
| Docket Number | CIVIL ACTION No. 17-1835 |
| Citation | 409 F.Supp.3d 337 |
| Parties | C. Chris MADUKA, Plaintiff v. TROPICAL NATURALS, LTD., Defendant |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Frank A. Mazzeo, Beth Anne Powers, Ryder Lu Mazzeo & Konieczny LLC, Colmar, PA, Phillip Thomas Horton, Horton Law PLLC, Farmington, UT, Robert J. Birch, Robert J. Birch, Esq., PC, Norristown, PA, for Plaintiff.
Andrew M. Calderon, Jeffrey H. Greger, Roberts Mlotkowski Safran Cole & Calderon PC, McLean, VA, Benjamin A. Andersen, Wisler Pearlstine LLP, Blue Bell, PA, for Defendant.
Pratter, J. Chinjindu Chris Maduka claims that he developed a brand of "African black soap" and related body care products which he markets and sells using the marks DUDU OSUN and DUDU OSUM.1 Mr. Maduka alleges that Tropical Naturals, Ltd.—a Nigerian entity that sells African black soap, among other things—infringed on his DUDU OSUN mark by selling products to businesses in the United States and elsewhere that bear the DUDU OSUN mark. He brings claims for trademark infringement and unfair competition under both federal and Pennsylvania law, and he seeks to recover $1,020,665.68, Tropical's alleged profits from its use of the DUDU OSUN mark in the last six years.2
Tropical asserts counterclaims against Mr. Maduka for trademark infringement and unfair competition and claims that it is the rightful owner of the DUDU OSUN mark. Tropical seeks to recover $29,235.02, Mr. Maduka's alleged profits from his use of the DUDU OSUN and DUDU OSUM marks in the last six years, and its attorneys' fees, and it moves for a permanent injunction barring Mr. Maduka from using the disputed marks. Tropical also asks the Court to order the United States Patent and Trademark Office to cancel Mr. Maduka's registration for the DUDU OSUM mark as well as Mr. Maduka's pending application for the DUDU OSUN mark.
The Court presided over a three-day bench trial and later heard oral argument on the parties' proposed findings of fact and conclusions of law. Upon consideration of these proceedings and the evidence presented therein, the Court concludes, as set forth below, that:
1. In this trademark case, the parties dispute the rightful ownership of the marks DUDU OSUN and DUDU OSUM but agree that those trademarks, with or without the use of a hyphen, are likely to cause consumers to be confused as to the source, sponsorship, or affiliation of goods when seeing the marks used on and in connection with soap and body care products. See Stipulations of Fact at ¶ 4.
2. Plaintiff and Counterclaim Defendant Chinjindu Chris Maduka is an individual who resides in Lansing, Michigan. See Trial Tr. Day 1 at 9:5-7. He immigrated to the United States from Nigeria in 1981 and is a United States citizen. See id. at 9:8-12.
3. Defendant and Counterclaim Plaintiff Tropical Naturals, Ltd. is a Nigerian company. See Stipulations of Fact at ¶ 7. The parties agree that a company known as Cosmos Chemicals is the predecessor-in-interest to Tropical such that, for purposes of this case, Cosmos and Tropical may be considered to have been the same company. See id. at ¶ 8; infra note 3.
4. Mr. Maduka and Tropical both sell soap products, including bar soap, known in the soap industry as "African black soap." See id. at ¶ 1.
5. African black soap is especially popular in Nigeria and nearby West African countries and is also popular in the United States, particularly with immigrants from West African nations. See id. at ¶ 2.
6. Tropical presented evidence of its use of the DUDU OSUN mark. See id. Tropical does not claim to have ever used the DUDU OSUM mark, but nonetheless claims that Mr. Maduka does not have rights to use either mark because Tropical established ownership rights to DUDU OSUN first, thus preventing subsequent, or junior, users from using confusingly similar marks, like DUDU OSUM.
7. Abiola Ogunrinde, the founder and owner of Tropical, see Trial Tr. Day 2 at 4:11-13, offered detailed testimony concerning the origin of the DUDU OSUN mark and how Tropical developed it. See id. generally.
8. Mr. Ogunrinde has a background in chemistry and, prior to forming his own company, worked for Unilever PLC where he oversaw the manufacture of several products, including soap. See id. at 9:20-10:17.
9. Following his work at Unilever, Mr. Ogunrinde founded Cosmos Chemicals—Tropical's predecessor in interest3 —where he first began to manufacture and sell fillers for paint and tile in 1991. See id. 45:1-18.
10. However, in 1995, after an economic downturn in Nigeria, Mr. Ogunrinde changed his business model and started manufacturing and selling African black soap in Nigeria using the DUDU OSUN mark. See id. at 45:19-48:11.
11. Mr. Ogunrinde explained that Tropical's DUDU OSUN soap is different from traditional Western soaps—which are made from animal fat—because it is made from vegetable oil and other natural products, including palm kernel oil, cocoa pod ash, palm ash, shea butter, honey, lime juice, lemon juice, aloe vera, and camwood. See id. at 47:9-48:3; Ex. D-34.
12. Mr. Ogunrinde testified that he developed the name DUDU OSUN by taking the words for "black" and "camwood" from Nigeria's four major languages4 and testing those words in different combinations to see how they would be received by consumers. See Trial Tr. Day 2 at 48:12-50:5. Mr. Ogunrinde eventually settled on the combination of "dudu," which means "black" in Yoruba, and "osun," which means "camwood" in Yoruba. See id.
13. Mr. Ogunrinde presented multiple photographs of how the DUDU OSUN mark originally looked in the 1990's. See id. at 52:17-53:5; Exs. D-12A through D.
14. He explained that he chose the grass logo—located next to the DUDU OSUN mark on Ex. D-12A—to represent the "herbal" nature of the black soap. See Trial Tr. Day 2 at 52:17-53:2. He further explained that he did not design the grass logo; rather, he picked it from clip art on his computer. See id. at 52:19-24.
15. Mr. Ogunrinde testified that Tropical changed the packaging for its DUDU OSUN soap in 2007. See Trial Tr. Day 2 at 56:8-57:16. At that time, it transitioned from the original brown-and-white box to the green box presently in use today. See id.; Exs. D-8 and D-34.
16. Mr. Ogunrinde testified that third-parties who bought Tropical's DUDU OSUN soap in Nigeria began importing it into the United States in 1996. See Trial Tr. Day 2 at 15:4-16:1; 63:13-18.
17. Mr. Ogunrinde admitted, however, that his earliest documentation of Tropical shipping products directly into the United States is from 2001, some five years after he had actually imported the products into the United States. He claimed that Tropical has been selling DUDU OSUN soap in the United States ever since. See id. at 15:4-16:16.
18. Tropical supported Mr. Ogunrinde's testimony with one invoice from December 2001 reflecting a shipment of one hundred cartons—4,800 bars—of Tropical's DUDU OSUN soap to International Beauty Care Company, a distributor in California. See id. at 65:15-66:6; Ex. D-17A.
19. Dr. Churchill Idah, who operates International Beauty Care Company, testified that he has been importing DUDU OSUN soap manufactured by Tropical for sale in the United States continuously from 2001 through the present. See Trial Tr. Day 3 at 35:4-11. He further testified that, since that time, he has sold Tropical's DUDU OSUN soap to distributors nationwide, see id. at 35:12-36:14, who then sell the soap to retailers, who in turn sell the soap to consumers. See id. at 36:23-37:1.
20. The parties stipulated that International Beauty Care Company "has been distributing [DUDU OSUN] branded soap throughout the United States as manufactured by Cosmos Chemicals and later by Tropical Naturals at least on or around the dates reflected upon Defendant's Exhibits D-2A through Y, D-4A and B, and D-17A." Trial Tr. Day 3 at 29:21-30:7 (emphasis added).
21. The exhibits referenced in that stipulation show the importation of over 150,000 bars of Tropical's DUDU OSUN soap from December 14, 2001 through April 27, 2016. The earliest invoice is the December 2001 invoice, see Ex. D-17A, the next invoice is from February 2008, see Ex. D-2W, and the remainder of the invoices are dated between 2008 and 2016. See Exs. D-2A through Y, D-4A and B.
22. Tropical also presented documentation of a sale of 48,000 bars of soap to a different distributor in Virginia in May 2002 for $28,479.00. See Trial Tr. Day 2 at 66:7-68:15; Ex. D-17B.
23. Although Tropical did not present any invoices demonstrating sales between May 2002 and February 2008, it presented other evidence of continued use of the DUDU OSUN mark in the United States during those years.
24. For example, Tropical's...
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