complaint - mccormick & co. v. badia spices inc

7/26/2019 Complaint - McCormick & Co. v. Badia Spices Inc.

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sf-3656832

UNITED STATES DISTRICT COURT

DISTRICT OF MARYLAND

BALTIMORE DIVISION

MCCORMICK & COMPANY, INCORPORATED,

18 Loveton Circle

Sparks, MD 21152

Plaintiff,

v.

Civil Action No. _____

DEMAND FOR JURY TRIAL

BADIA SPICES, INC.,1400 NW 93rd Ave.

Miami, FL 33172

Defendant.

COMPLAINT

Plaintiff, McCormick & Company, Incorporated (McCormick), for its Complaint against

Defendant Badia Spices, Inc. (Defendant), alleges as follows:

PARTIES

1. McCormick is a corporation duly organized and existing under the laws of the State of

Maryland, with a principal place of business within this judicial district at 18 Loveton Circle, Sparks,

Maryland 21152, Baltimore County.

2. On information and belief, Defendant is a corporation organized under the laws of the

State of Florida, having its principal place of business in Miami, Florida.

JURISDICTION AND VENUE

3. This Court has original subject matter jurisdiction over all counts alleged in this

complaint pursuant to: 15 U.S.C. 1121 as they all arise under the Federal Trademark (Lanham) Act


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(15 U.S.C. 1051et seq.); 28 U.S.C. 1338(a), in that all claims arise under an Act of Congress

relating to trademarks; and 28 U.S.C. 1331, in that all claims arise under the laws of the United States.

4. This Court has personal jurisdiction over Defendant as, on information and belief,

Defendant does business in this judicial district; Defendants infringing products complained of herein

are sold within this judicial district; and Defendant has caused harm within this judicial district.

5. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b)(2) because

Defendants transactions in this District constitute a substantial part of the events giving rise to

McCormicks complaint. Furthermore, McCormick has suffered harm in this District and the Lanham

Act provides that venue lies in the place of harm to the plaintiff.

GENERAL ALLEGATIONS

The OLD BAY Packaging Trade Dress

6. In 1889, Willoughby M. McCormick and three young workers started a company,

operating out of a cellar, to sell food flavorings and extracts door to door. Since that time, McCormick

and its predecessors in interest have been in the business of producing and selling food-related products,

including food seasonings, spice blends, marinades and sauces.

7. McCormick is one of the most respected names in the food seasonings industry today,

manufacturing, marketing, and distributing spices, seasoning mixes, condiments, extracts, and other

seasoning products to retail outlets, food manufacturers, and food service businesses around the world.

8.

One of McCormicks most beloved and most time-honored products is its OLD BAY

seasoning blend. Developed in Maryland in 1939 by McCormicks predecessor in interest, the OLD

BAY seasoning blend is a distinctive blend of herbs and spices that was originally marketed as a crab

seasoning in the Chesapeake Bay area, a region known for its blue crabs and crab houses. The OLD


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BAY product has since become a popular seasoning and condiment for a wide range of uses, including

for seafood, poultry, meats, salads, soups, and snack foods.

9. Due to the popularity of crab houses and crab seasonings in Maryland in the 1930s, the

OLD BAY seasoning blend was marketed in a distinctive tin container that would stand out from

competing seasoning products and would be recognizable to consumers. Since at least as early as 1939,

this container has featured a yellow background on all sides of the container and on the front label, and

vertical and horizontal blue stripes on the front. The front also displays the OLD BAY mark in white

block lettering, set against the horizontal blue stripe, and seafood and poultry illustrations that highlight

popular uses of the OLD BAY product. Below is an image of the original OLD BAY container:

10. After it acquired the OLD BAY product line in 1990, McCormickrecognizing the

enormous value and goodwill built up in the OLD BAY brand and packaging through decades of

consumer usecontinued to market the OLD BAY seasoning blend in a container substantially similar

to the original, with the new addition of a red container top (collectively, the OLD BAY Trade Dress):


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11. In addition to the original OLD BAY product, McCormick offers different flavor

variations and compositions of the OLD BAY seasoning blend, all of which are marketed under the

OLD BAY mark and sold in packaging that features common elements with the OLD BAY Trade Dress

As seen below, each product in McCormicks OLD BAY product line is currently packaged in a

container featuring a red top, a label on the front of the container comprised of the colors yellow and

blue, the OLD BAY mark in white block lettering set against a blue background, and seafood and

poultry illustrations. Consistent with its original packaging, the original OLD BAY seasoning blend

features a vertical navy blue stripe on the front of the container (above), while new product variations

feature a vertical stripe of a different color (below).

12.

McCormick offers its OLD BAY seasoning products in assorted sizes and container

types. Some products are packaged in a clear plastic container instead of a tin container. As shown

here, these products also feature the OLD BAY Trade Dress:


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13. McCormick and its predecessor in interest have used the OLD BAY Trade Dress or

similar variations thereof continuously, extensively and exclusively for more than 75 years in connection

with the OLD BAY line of seasoning products.

14. McCormick strictly controls all uses of the OLD BAY Trade Dress and controls the

quality of the products offered under the OLD BAY Trade Dress.

15. McCormicks OLD BAY seasoning products are used by a wide variety of consumers

ranging from casual purchasers to food service providers.

16.

McCormicks OLD BAY seasoning blend ranks among the best-selling seasonings in the

United States. The OLD BAY product line is sold in interstate commerce in retail grocery stores, mass

merchandise stores, and through online marketplaces and retail websites. OLD BAYs popularity has

extended far beyond Maryland, with sales in all regions of the United States.

17. The popularity of McCormicks OLD BAY seasoning products has also extended to

markets outside the United States. The OLD BAY seasoning blend is sold to and used by consumers

around the world, including in Canada, France, and the United Kingdom.

18. The combined elements that comprise the OLD BAY Trade Dress have acquired

distinctiveness among consumers and serve to identify McCormick as the source of McCormicks OLD

BAY seasoning products. Neither the individual elements nor overall packaging design is functional.

The color elements of the OLD BAY Trade Dress are not common to the food seasonings industry or

food seasoning products in general.

19. McCormicks competitors have numerous design alternatives available for packaging

food seasoning products.


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McCormicks OLD BAY Trade Dress Rights

20. McCormick owns U.S. Trademark Registration No. 4,259,998 covering elements of the

OLD BAY Trade Dress for spices, seasonings, spice blends, and seasoning blends in International Class

30 (the Registered Trade Dress).

21. McCormicks application to register the trade dress elements shown in Registration

No. 4,259,998 was filed on April 29, 2011 and matured to registration on December 18, 2012. Attached

as Exhibit Ais a true and correct copy of the registration certificate issued by the U.S. Patent and

Trademark Office for said registration.

22. Through its and its predecessors longstanding, widespread, and substantially exclusive

use of the OLD BAY Trade Dress and similar iterations since 1939, McCormick also owns significant

common law rights in the OLD BAY Trade Dress, which are not limited to the Registered Trade Dress

identified in Registration No. 4,259,998.

Public Recognition of the OLD BAY Trade Dress

23. McCormicks OLD BAY seasoning blend and the OLD BAY Trade Dress have been

repeatedly featured in newspapers, publications, and Internet articles.

24. In a 1989 article published in The Inquirerin Philadelphia, the OLD BAY seasoning

product is described as those blue-and-yellow cans and an institution in Maryland that had grown

beyond Maryland and seafood. (Seehttp://articles.philly.com/1989-07-12/food/26132122_1_crab-

cakes-baltimore-spice-chesapeake-bay.)

25. With the addition of a red container top to the packaging in or around 1990, and new

flavors to the product line, the public has come to associate the OLD BAY Trade Dress with

McCormick and to recognize McCormick as the source of OLD BAY products.


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26. McCormicks OLD BAY products were the subject of a 2008 post on Serious Eats, a

popular food website and recipient of a James Beard Foundation award for Best Food Blog. The

iconic spice blend was described as standing out due to McCormicks bright red, yellow, and blue

canister of Old Bay Seasoning. (Seehttp://www.seriouseats.com/recipes/2008/10/old-bay-classic-

shrimp-scampi-recipe.html.)

27. In 2015, after McCormicks launch of a hot variation of the OLD BAY seasoning

blend,Baltimoremagazine published an article on the newest OLD BAY product, describing the look of

the product packaging as much the same as the original with the iconic blue, red, and yellow color

scheme. (See http://www.baltimoremagazine.net/2015/7/23/our-favorite-old-bay-inspired-products.)

28. McCormicks advertising efforts have contributed to national recognition of the OLD

BAY Trade Dress. To commemorate the 75th

anniversary of the OLD BAY seasoning blend,

McCormick designed a limited edition container with elements of the OLD BAY Trade Dress.

McCormick also worked with MGH, an ad agency, to publicize OLD BAY seasoning in television ads

and billboards in venues around the country. MGH created a two-page print ad prominently showcasing

the OLD BAY Trade Dress. For this ad, MGH received the Gold National ADDY award, the highest

recognition given by the American Advertising Federation.

29. McCormick also collaborated with a Maryland-based brewery to produce a special

75th

anniversary OLD BAY beer, with a red, blue, and yellow label scheme designed to highlight the

look of the classic OLD BAY seasoning containers.

30. McCormick has designed and released other limited edition OLD BAY seasoning

containers featuring elements of the OLD BAY Trade Dress to commemorate sporting achievements.

31. As a result of McCormicks substantial advertising and promotion of the OLD BAY

Trade Dress and product line, as well as the huge popularity of OLD BAY seasoning, the OLD BAY


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Trade Dress has acquired distinctiveness and significant goodwill. The OLD BAY Trade Dress is

associated exclusively with McCormick in the minds of consumers.

Defendants Infringing Conduct

32. On information and belief, Defendant has deliberately copied elements of McCormicks

OLD BAY Trade Dress for the packaging design of Defendants competing seasoning blend, marketed

under the BISCAYNE BAY mark.

33. As shown below, Defendants BISCAYNE BAY packaging utilizes a combination of

several elements of the OLD BAY Trade Dress. Like McCormicks OLD BAY Trade Dress,

Defendants BISCAYNE BAY trade dress features a red top, a label on the front of the container

primarily comprised of the colors yellow and blue, the BISCAYNE BAY mark in white block lettering

set against a blue background, and seafood and poultry illustrations on the front of the container:

McCormicks OLD BAY

Trade Dress

Badias BISCAYNE BAY

Trade Dress

34.

Defendants copying has been widely observed in the industry and mentioned in articles

discussing Defendants BISCANYE BAY seasoning blend. For example, a writer for theMiami Herald

wrote, Theres little doubt what popular brand of seafood spice [linking to an image of McCormicks

OLD BAY container] Badia is trying to remind consumers of with its Biscayne Bay label. Attached as

Exhibit Bis a true and correct copy of theMiami Heraldarticle published on February 20, 2015.


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35. On information and belief, Defendant began marketing and distributing its BISCAYNE

BAY seasoning products only recently, long after McCormick and its predecessor in interest began use

of the OLD BAY Trade Dress, and long after the OLD BAY Trade Dress became well known and

associated with McCormick,

36. On information and belief, Defendant, knowing of McCormicks OLD BAY products

and of McCormicks prior rights in the OLD BAY Trade Dress, intentionally appropriated the goodwill

associated with McCormicks OLD BAY products by choosing to copy the OLD BAY Trade Dress and

to adopt a brand name that incorporates the term BAY, thus resembling McCormicks OLD BAY

brand.

37. On information and belief, Defendants BISCAYNE BAY products, like McCormicks

OLD BAY products, are marketed to a wide variety of consumers, ranging from casual purchasers to

food service providers, and are sold in various consumer sizes.

38. On information and belief, Defendants BISCAYNE BAY products are sold through the

same channels as McCormicks OLD BAY products.

39. McCormick has not authorized, licensed or otherwise endorsed Defendants use of a

packaging design confusingly similar to McCormicks OLD BAY Trade Dress.

COUNT I

FEDERAL TRADE DRESS INFRINGEMENT

(15 U.S. 1114)

40.

McCormick repeats the allegations in paragraphs 1 through 39 of this Complaint as

though fully set forth herein.

41. McCormick owns U.S. Trademark Registration No. 4,259,998 for the Registered Trade

Dress, namely, the overall color scheme of the OLD BAY Trade Dress, comprising a red top, a yellow

background, and vertical and horizontal blue stripes on the front of the seasoning container.


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42. Defendants packaging of the BISCAYNE BAY product line copies and infringes

McCormicks Registered Trade Dress.

43. Defendants sale, offer for sale, and distribution of the BISCAYNE BAY products with a

packaging design that copies a combination of elements of the Registered Trade Dress, coupled with

Defendants use of a brand name that incorporates the term BAY, is likely to cause confusion, cause

mistake, or deceive consumers as to the affiliation, connection, or association of Defendant with

McCormick, or as to the origin, sponsorship, or approval by McCormick of Defendants goods or

commercial activities.


packaging design that copies a combination of elements of the Registered Trade Dress, coupled with

Defendants use of a brand name that incorporates the term BAY, enables Defendant to benefit

unfairly from McCormicks reputation and success, thereby giving Defendants infringing products sales

and commercial value they would not otherwise have.

45. Defendants unauthorized use of a trade dress for its BISCAYNE BAY product

packaging that is likely to cause confusion, cause mistake, or deceive consumers as to the affiliation,

connection, or association of Defendant with McCormick, or as to the origin, sponsorship, or approval

by McCormick of Defendants goods or commercial activities is in violation of 15 U.S.C. 1114(a).

46. Prior to Defendants first use of the Registered Trade Dress, Defendant was aware of

McCormicks OLD BAY business and had either actual notice and knowledge, or constructive notice, of

the Registered Trade Dress.

47. McCormick is informed and believes, and on that basis alleges, that Defendants

infringement of the Registered Trade Dress as described herein has been and continues to be intentional,

willful, and without regard to McCormicks rights in the Registered Trade Dress.


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48. McCormick is informed and believes, and on that basis alleges, that Defendant has

gained profits by virtue of its infringement of the Registered Trade Dress.

49. McCormick also has sustained damages as a direct and proximate result of Defendants

infringement of the Registered Trade Dress in an amount to be proven at trial.

50. McCormick will suffer and is suffering irreparable harm from Defendants infringement

of the Registered Trade Dress insofar as McCormicks invaluable goodwill is being eroded by

Defendants continuing infringement. McCormick has no adequate remedy at law to compensate it for

the loss of business reputation, customers, market position, and goodwill and confusion of potential

customers flowing from Defendants infringing activities. Pursuant to 15 U.S.C. 1116, McCormick is

entitled to an injunction against Defendants continuing infringement of the Registered Trade Dress.

Unless enjoined, Defendant will continue its infringing conduct.

51. Because Defendants actions have been committed with intent to damage McCormick

and to confuse and deceive the public, McCormick is entitled to Defendants profits, treble

McCormicks actual damages, an award of costs, and, this being an exceptional case, reasonable

attorneys fees pursuant to 15 U.S.C. 1117(a).

COUNT II

FALSE DESIGNATION OF ORIGIN

(15 U.S.C. 1125(a))

52. McCormick repeats the allegations in paragraphs 1 through 51 of this Complaint as

though fully set forth herein.

53. McCormick has common law rights in the OLD BAY Trade Dress, featuring a red top, a

yellow background on all sides of the container or the label, vertical and horizontal blue stripes on the

front of the container, the OLD BAY mark in white block lettering set against a blue background, and

seafood and poultry illustrations on the front.


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54. Defendants packaging of the BISCAYNE BAY product line copies and infringes

McCormicks OLD BAY Trade Dress.


packaging design that copies a combination of elements of the OLD BAY Trade Dress, coupled with

Defendants use of a brand name that incorporates the term BAY, is likely to cause confusion, cause

mistake, or deceive consumers as to the affiliation, connection, or association of Defendant with

McCormick, or as to the origin, sponsorship, or approval by McCormick of Defendants goods or

commercial activities.


packaging design that copies a combination of elements of the OLD BAY Trade Dress, coupled with

Defendants use of a brand name that incorporates the term BAY, enables Defendant to benefit

unfairly from McCormicks reputation and success, thereby giving Defendants infringing products sales

and commercial value they would not otherwise have.

57. Defendants unauthorized use of a trade dress for its BISCAYNE BAY product

packaging that is likely to cause confusion, cause mistake, or deceive consumers as to the affiliation,

connection, or association of Defendant with McCormick, or as to the origin, sponsorship, or approval

by McCormick of Defendants goods or commercial activities is in violation of 15 U.S.C. 1125(a).

58. Prior to Defendants first use of the OLD BAY Trade Dress, Defendant was aware of

McCormicks OLD BAY business and had either actual notice and knowledge, or constructive notice, of

the OLD BAY Trade Dress.

59. McCormick is informed and believes, and on that basis alleges, that Defendants

infringement of the OLD BAY Trade Dress as described herein has been and continues to be intentional,

willful, and without regard to McCormicks rights in the OLD BAY Trade Dress.


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60. McCormick is informed and believes, and on that basis alleges, that Defendant has

gained profits by virtue of its infringement of the OLD BAY Trade Dress.

61. McCormick also has sustained damages as a direct and proximate result of Defendants

infringement of the OLD BAY Trade Dress in an amount to be proven at trial.

62. McCormick will suffer and is suffering irreparable harm from Defendants infringement

of the OLD BAY Trade Dress insofar as McCormicks invaluable goodwill is being eroded by

Defendants continuing infringement. McCormick has no adequate remedy at law to compensate it for

the loss of business reputation, customers, market position, and goodwill and confusion of potential

customers flowing from Defendants infringing activities. Pursuant to 15 U.S.C. 1116, McCormick is

entitled to an injunction against Defendants continuing infringement of the OLD BAY Trade Dress.

Unless enjoined, Defendant will continue its infringing conduct.

63. Because Defendants actions have been committed with intent to damage McCormick

and to confuse and deceive the public, McCormick is entitled to Defendants profits, treble

McCormicks actual damages, an award of costs, and, this being an exceptional case, reasonable

attorneys fees pursuant to 15 U.S.C. 1117(a).

PRAYER FOR RELIEF

WHEREFORE, McCormick prays that the Court enter an Order;

A. Adjudging that Defendant is committing trade dress infringement and false designation of

origin under 15 U.S.C. 1114 and 1125(a);

B. Enjoining Defendant and its officers, agents, servants, employees, attorneys, and assigns,

and all persons in active concert or participation with any of them, from offering or advertising any food

or food-related products in the current BISCAYNE BAY packaging or any packaging design

confusingly similar to the OLD BAY Trade Dress or other trade dress likely to be associated with


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McCormick;

C. Requiring Defendant to file with this Court and to serve on McCormick, within thirty

(30) days after entry of the injunction, a report in writing and under oath setting forth in detail the

manner and form in which Defendant has complied with the injunction;

D. Requiring Defendant to provide a complete accounting to McCormick for any and all

profits realized from the sale of Defendants products in packaging that infringes McCormicks OLD

BAY Trade Dress, from inception up through the date of the injunction;

E. Requiring Defendant, pursuant to 15 U.S.C. 1118, to deliver up for destruction, or to

show proof of said destruction or sufficient modification to eliminate the infringing matter, all catalogs,

articles, products, displays, labels, circulars, letterhead, business cards, promotional items, clothing,

literature, or other matter in the possession, custody, or under the control of Defendant or its agents

bearing or displaying the current BISCAYNE BAY packaging design in any manner, or any trade dress

that is confusingly similar to or a colorable imitation of the OLD BAY Trade Dress;

F. Awarding McCormick its actual compensatory damages, including but not limited to

Defendants profits and McCormicks damages, in an amount to be determined at trial;

G. Awarding McCormick treble damages pursuant to 15 U.S.C. 1117 for Defendants

knowing, intentional and willful violations of federal law;

H. As this is an exceptional case, pursuant to 15 U.S.C. 1117(a), awarding McCormick its

costs and attorneys fees; and

I. Awarding to McCormick such other and further relief as this Court deems just and

proper.


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DEMAND FOR JURY TRIAL

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, McCormick hereby demands a jury

trial on all issues triable by jury.

Dated: June 10, 2016 Respectfully submitted,

MORRISON & FOERSTER LLP

/s/ G. Brian Busey

G. Brian Busey (D. Md. Bar No. 03918)[email protected]

2000 Pennsylvania Ave. N.W., Suite 6000

Washington, D.C. 20006Tel: (202) 887-1500

Fax: (202) 785-7518

complaint - mccormick & co. v. badia spices inc

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