Perry v. H. J. Heinz Company Brands, L.L.C.

994 F.3d 466 (5th Cir. 2021)

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Nature of the Case

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Facts

Mr. Dennis Perry (P) makes Metchup from Walmart-brand mayonnaise and ketchup or Walmart-brand mustard and ketchup. P sells Metchup exclusively from the lobby of a nine-room motel adjacent to his used-car dealership in Lacombe, Louisiana. P has registered Metchup as an incontestable trademark. Sales have been slow. Since 2010, P has produced only 50 to 60 bottles of Metchup, which resulted in sales of around $170 and profits of around $50. P submitted a photograph to the PTO, which then issued him a trademark registration for the name Metchup in 2011. He renewed the trademark registration in 2017 (submitting the same photo he submitted in his first application), and the PTO declared the mark incontestable in 2018. He owns www.metchup.com but has never sold Metchup online. D makes Mayochup, which is solely a blend of mayonnaise and ketchup. To promote Mayochup, D held an online naming contest where fans proposed names. A fan submitted Metchup, and D posted a mock-up bottle bearing the name Metchup on its website alongside mock-up bottles for the other proposed names. D never sold a product labeled Metchup. P sued D for trademark infringement. D filed a motion for summary judgment. The district court dismissed P's claims because it found that there was no likelihood of confusion between Mayochup and Metchup and no confusion caused by D's fleeting use of Metchup in advertising. The court canceled P's trademark registration after concluding that he had failed to prove that he had made lawful, non-de minimis use of the Metchup mark in commerce.