Southern Snow Manufacturing Co., Inc. v. SnoWizard Holdings, Inc. et al

Filing 371

ORDER & REASONS denying 351 Motion to Reconsider Validity of Snowsweet. Signed by Judge Jay C. Zainey. (Reference: 99-3394)(gbw, )

June 8, 2011

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
SOUTHERN SNOW MANUFACTURING CO., ET AL.
VERSUS

CIVIL ACTION
NO. 06-9170 c/w
09-3394, 10-791

SNO WIZARD HOLDINGS, INC., ET AL.

SECTION "A"(1)

ORDER AND REASONS (Ref: 99-3394)
Before the Court is a Motion to Reconsider Validity of
SNOSWEET® (Rec. Doc. 351) filed by Plaintiffs.
the motion.

SnoWizard opposes

The motion, set for hearing on June 8, 2011, is

before the Court on the briefs without oral argument.
On April 18, 2011, the Court granted summary judgment in
favor of SnoWizard as to the validity of SNOSWEET® (Rec. Doc.
333).

The sole issue framed for consideration by SnoWizard’s

motion and by Plaintiffs’ opposition1 was Plaintiffs’ contention
that the 2006 and 2008 transfers of the product were insufficient
to constitute “use in commerce.”

15 U.S.C.A. § 1127 (2009).

The

Court rejected that contention as a matter of law and will not
1

Plaintiffs’ motion for reconsideration presents arguments
that were not made in their original opposition or the
supplement, both of which contained minimal argument pertaining
to the validity of SNOSWEET®.
1

revisit it now.2

But the Court never considered issues such as

exclusive or prior use or continuity because no party raised
those issues.

The Court’s ruling as to the validity of SNOSWEET®

was not intended to foreclose any other properly pleaded claims.
But the question of whether the statutory use in commerce
requirement is satisfied is closed.
Accordingly, and for the foregoing reasons;
IT IS ORDERED that the Motion to Reconsider Validity of
SNOSWEET® (Rec. Doc. 351) filed by Plaintiffs is DENIED.
* * * * * * * *

2

The Court conducted extensive research and could find no
case to suggest that the transfers that SnoWizard could
demonstrate via documentary evidence do not constitute use in
commerce. The Court could find no support for the suggestion
that a transfer of funds or an actual “sale,” which is the point
that Plaintiffs kept pressing, is required. In fact, the
legislative history associated with the changes in the law that
eliminated token and sham use specifically envisions transfers
for purposes like testing that do not involve sales. Moreover,
the issues of disputed fact that Plaintiffs have identified are
not material. The question of whether SnoWizard’s demonstrated
use of a mark constitutes use in commerce and whether The
SnoWizard SnoBall Shoppe is a related entity are questions of law
that the Court decides. These are not questions for a jury.
2