Unlinked Webpage Doesn’t Support Trademark Infringement–Nelson-Ricks v. Lakeview
A now-defunct cheese company owned two brands, “Banquet” and “Nelson Ricks Creamery.” The defendant bought the Banquet brand and associated website, plus it got a limited license to use the Nelson Ricks Creamery brand. The plaintiff bought the Nelson Ricks Creamery brand.
The flashpoint for the litigation is the banquetcheese.com “About Us” page, which discussed the common origin of the two brands. This appears to be the page in question:
After the plaintiff acquired its brand, it demanded that the defendant remove discussion of that brand from the About Us page. The defendant delinked the About Us page from throughout its website but didn’t actually delete or edit the page. A year later, the plaintiff discovered the About Us page URL still worked if you typed it into a browser, so it sent the defendant a C&D. The defendant then edited the page.
You might think that would be the end of this story, but no. The plaintiff sued the defendant in federal court for trademark infringement and related claims. The court rejects the claims.
The Orphaned Webpage
No Use in Commerce. The court says the defendant didn’t make a use in commerce because the About Us page was historical in nature: it “told the story of the Banquet cheese brand and the Mark was included to describe when the company was founded and what kind of products are offered.”
No Likelihood of Confusion. The court says the defendant’s delinking of the About Us page, following by its edit after the C&D, shows that the defendant didn’t have bad intent. Regarding actual confusion, “NRCC has not produced a single example of anyone being confused, mislead [sic], or deceived by Lakeview’s actions.” Initial interest confusion doesn’t help because “NRCC cannot provide a single example of initial interest confusion happening” and the defendant lacked the requisite intent. Regarding purchaser sophistication, the fact that the parties are B2B vendors weighs in the defense’s favor.
No Damages. “NRCC cannot prove even a single dollar in damages.”
The Old Photos
The court says:
The substance of NRCC’s motion to supplement is a recently discovered link on Lakeview’s webpage to a PDF document. This PDF document appears to be a product information sheet that lists the various Banquet brand cheese products and their dimensions: height, weight, and length—by the case and by the pallet. There are accompanying pictures of the various products. These pictures, however, are the old Banquet Cheese packages; thus, in very fine print at the bottom of some of the packages is the name “Nelson Ricks Creamery Company.”
Here is an example of the allegedly infringing images (there are several like this). The Nelson Ricks name appears on each cheese block in the white lettering between the Banquet oval logo and the colorful rectangle. I doubt you can blow up this image large enough to see it, but I can confirm it’s there.
The court handled this topic very professionally, doing a lightweight trademark analysis that resembles its analysis of the orphaned webpage–no use in commerce, no bad intent, no consumers were confused, buyers are sophisticated. If I had been the judge, my response would not have been as professional. Profanity might have been involved. Phrases like “FFS” and “are you shitting me?” might have come up.
When dealing with toddlers, we sometimes have to ask them if a particular issue is a “big problem” or a “little problem.” We also sometimes need to ask trademark owners the same question. Our country turning into a dumpster fire? Big problem. A trademark reference on a page that no one can find? Little problem. Very very little problem. Definitely not worthy of a federal case.
To me, this lawsuit was well out of the range of normal trademark enforcement actions I see. If I were the defendant, I would move for my attorneys fees because I think this case was indeed “exceptional.” If you are a trademark owner, cases that are this tendentious do not help build your brand.
Case citation: Nelson-Ricks Cheese Company v. Lakeview Cheese Company, 2018 WL 3421827 (D. Id. July 12, 2018).