Sensient Technologies v. Sensoryeffects Flavor

• Decision Date: 12 June 2009
• Docket Number: No. 4:08CV00336 ERW.,4:08CV00336 ERW.
• Citation: 636 F.Supp.2d 891
• Parties: SENSIENT TECHNOLOGIES CORPORATION, et al., Plaintiffs, v. SENSORYEFFECTS FLAVOR COMPANY, et al., Defendants.
• Court: U.S. District Court — Eastern District of Missouri

636 F.Supp.2d 891

SENSIENT TECHNOLOGIES CORPORATION, et al., Plaintiffs, v. SENSORYEFFECTS FLAVOR COMPANY, et al., Defendants.

No. 4:08CV00336 ERW.

United States District Court, E.D. Missouri, Eastern Division.

June 12, 2009.

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Andrew B. Mayfield, William M. Corrigan, Jr., Armstrong Teasdale, LLP, St. Louis, MO, Monica M. Riederer, Paul F. Linn, Michael and Best, Milwaukee, WI, for Plaintiffs.

David S. Corwin, Vicki L. Little, Devereux and Murphy, St. Louis, MO, for Defendants.

MEMORANDUM AND ORDER

E. RICHARD WEBBER, District Judge.

This matter comes before the Court on Plaintiffs' Motion for Summary Judgment [doc. # 73], Defendants' Motion for Summary Judgment [doc. # 77] and Defendants' Motion to Strike Affidavit of Monica M. Riederer [doc. # 89].

I. PROCEDURAL HISTORY

Sensient Technologies Corporation and Sensient Flavors LLC ("Sensient Flavors") (collectively, "Plaintiffs") brought this lawsuit against SensoryFlavors, Inc. ("SensoryFlavors"), SensoryEffects Flavor Company, Performance Chemicals & Ingredients Co. ("Defendant PCI"), Diehl Food Ingredients, Inc. ("Defendant Diehl") and Highlander Partners, L.P. ("Defendant HP") (collectively, "Defendants"). Plaintiffs sought a temporary restraining order prohibiting SensoryFlavors from using their name and mark. The Court found for Plaintiffs and issued the temporary restraining order on March 21, 2008. SensoryFlavors then began using the names SensoryEffects Flavor Company and SensoryEffects Flavor Systems.¹ As a result of the abandonment of the SensoryFlavors name and the subsequent name change, Plaintiffs withdrew their Motion for Preliminary Injunction.

Plaintiffs subsequently filed an Amended Complaint. In their Amended Complaint, Plaintiffs detailed six grounds for relief, and they seek relief based upon both the SensoryEffects Flavor Systems and the SensoryFlavors names. In Count 1, Plaintiffs seek to recover for Federal Trademark Infringement, Count 2 is a claim for Federal Unfair Competition, Count 3 is a claim for Federal False Advertising, Count 4 is a claim for Common Law Trademark Infringement and Unfair Competition, Count 5 is a claim for Trademark Infringement under Mo.Rev.Stat. § 417.066(1), and in Count 6 Plaintiffs seek to recover for Trademark Dilution under Mo.Rev.Stat. § 417.061(1).

II. MOTION TO STRIKE

Defendants have filed a motion to strike the affidavit of Monica M. Reiderer. They assert that this affidavit should be struck pursuant to Fed. R. Civ. P. 56(e). This Rule requires that affidavits "be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant is competent to testify on the matters stated." If an affidavit does not satisfy these requirements, "it is subject to a motion to strike." McSpadden v. Mullins, 456 F.2d 428, 430 (8th Cir. 1972).

In this affidavit, Reiderer lists each exhibit supporting Plaintiffs' Motion for Summary Judgment and states that the exhibit "is a true and correct copy." The Court acknowledges that what Defendants assert is not that every one of these exhibits is inadmissible, but instead that some of them have not been properly authenticated or contain hearsay. The Court will only consider evidence "that would be admissible in evidence." The Motion to Strike will be granted, in part, and denied, in part.

III. BACKGROUND FACTS²

Sensient Technologies Corporation ("Sensient") was previously known as Universal Foods. In 2000, Universal Foods decided to re-brand itself as Sensient, and invested time and money to rename itself and its subsidiaries, including Sensient Flavors. Sensient owns several trademarks, including SENSIENT, SENSIENT TECHNOLOGIES, SENSIJET, SENSIPEARL, SENSIPLAST, and SENSIROME. Sensient also uses the trade name Sensient Flavors. The Sensient marks and trade names have been used since 2000. Sensient Flavors employees are trained to identify their employer as "Sensient Flavors" when communicating with customers in person or over the phone.

Charles Nicolais ("Nicolais") and several other of Defendants' employees previously worked for Sensient Colors, a sister company of Sensient Flavors. Nicolais left Sensient Colors and started a company called Performance Chemicals and Ingredients, LLC. Nicolais later formed Performance Chemicals and Ingredients Co. (Defendant PCI). Defendant PCI purchased substantially all of the assets of Defendant Diehl in May 2006. In November 2006, Defendant PCI purchased substantially all of the assets, equipment, trademarks and trade names of a business named SensoryEffects. SensoryEffects' prior owners had filed an application for the registration of the SensoryEffects name and graphic on July 2004. The trademark was formally registered on July 3, 2007, however, the name and mark had been used in the market since July 2004.

On February 13, 2008, Defendant PCI acquired substantially all of the assets of Givaudan Flavors, Inc. ("Givaudan Flavors"), the dairy flavor systems business within Givaudan Flavors Corporation. When Defendant PCI purchased Givaudan Flavors, they were not permitted to use the Givaudan Flavors name for more than sixty days after the purchase.

Nicolais and Dennis Reid, along with their counsel, were involved in selecting a new name for Givaudan Flavors. Nicolais made the final decision to utilize the name SensoryFlavors. Defendants have presented evidence to the Court that while Nicolais was aware that Sensient had a flavor corporation, he was not aware that they used the name Sensient Flavors. Defendants state that they consulted with their attorneys who searched PTO records and corporate names. They then developed the SensoryFlavors name through combining their SensoryEffects name that had been in use since 2004 and the Givaudan Flavors name. Representatives of Defendants have testified that they selected this name in order to capitalize upon the already established SensoryEffects name and mark and the goodwill established under the Givaudan Flavors name.

Defendants used the SensoryFlavors name from February 13, 2008 to March 14, 2008, ceasing their use of the name after this lawsuit was filed. During this period, Defendants conducted at least two presentations to customers with that name. Additionally, they used the name on correspondence, and released the name via press release. They also began to construct a website with the name, however, the site was always under construction. After this lawsuit was filed they changed their name to SensoryEffects Flavor Systems.

While their product markets differ slightly, the Parties are direct competitors, as they both sell flavor delivery systems to food and food ingredient companies. Plaintiffs have not produced any evidence of actual confusion over the SensoryEffects Flavor Systems name by any customers or potential customers. The Parties state that some of their initial client contacts come through phone calls to potential customers. However, sales are not completed during that initial phone call. Instead, they work with their potential customers in a collaborative process to produce a product in accordance with the customer's specifications. Plaintiffs have introduced no evidence that Defendants attempted to lure their customers, and the evidence demonstrates that Defendants' customer base is the Givaudan Flavors customer base that they intended to capture when they entered this market. Defendants have introduced evidence that another competitor in their market does business under the name Sensus Flavors, and another corporation uses the name Symrise.

IV. LEGAL STANDARD

Pursuant to Federal Rule of Civil Procedure 56(c), a court may grant a motion for summary judgment only if all of the information before the Court shows "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R.Civ.P. 56(c). See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The Supreme Court has noted that "[s]ummary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed to `secure the just, speedy and inexpensive determination of every action.'" Id. at 327, 106 S.Ct. 2548 (quoting Fed.R.Civ.P. 1).

"By its very terms, [Rule 56(c)(1)] provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Material facts are those "that might affect the outcome of the suit under the governing law," and a genuine material fact is one "such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. 2505. Further, if the nonmoving party has failed to "make a showing sufficient to establish the existence of an element essential to that party's case, ... there can be `no genuine issue as to any material fact,' since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548.

The initial burden of proof in a motion for summary judgment is placed on the moving party to establish "the non-existence of any genuine issue of fact that is material to a judgment in his favor." City of Mt. Pleasant, Iowa v. Associated Elec. Co-op., Inc., 838 F.2d 268, 273 (8th Cir. 1988). Once this burden is discharged, if the record does in fact bear out that no genuine dispute exists, the burden then shifts to the non-moving party who must set forth affirmative evidence and specific facts showing there is a genuine dispute on that issue. Anderson, 477 U.S. at 256-57, 106 S.Ct. 2505. When the burden shifts, the...