Goya Foods Inc. v. Orion Distributors Inc. et al
Filing
46
Opinion and Order re: 22 Motion for Summary Judgment; 23 Motion for Summary Judgment. Signed by US Magistrate Judge Bruce J. McGiverin on March 29, 2012. (McGiverin, Bruce)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
GOYA FOODS, INC.,
Plaintiff,
v.
Civil No. 10-1168 (BJM)
ORION DISTRIBUTORS, INC., doing business
as Orion Distributors VM, Inc., et al.,
Defendants.
OPINION AND ORDER
Goya Foods, Inc. (“Goya”) sued Orion Distributors, Inc. (“Orion”) and Angel M.
Navarro (“Navarro”) (collectively, “defendants”), claiming trademark infringement and unfair
competition under the Lanham Act, 15 U.S.C. §§ 1051 et seq., trademark and trade dress
infringement under Law No. 169 of December 19, 2009, 10 L.P.R.A. §§ 223 et seq., violations
of moral rights under Law 96 of July 15, 1988, 31 L.P.R.A. § 1401f, “common law unfair
competition” under the natural justice provision of Article 7 of the Civil Code, 31 L.P.R.A. § 7,
and tort liability under Article 1802 of the Civil Code, 31 L.P.R.A. § 5141, arising out of Orion’s
marketing of DEL JIBARITO brand foods. (Docket No. 1). Before the court are cross motions for
summary judgment regarding the “likelihood of confusion” element common to Goya’s Lanham
Act claims. (Docket Nos. 22, 23). Defendants replied to and opposed Goya’s motion (Docket
No. 35), and Goya further replied (Docket No. 36). For the reasons that follow, Goya’s motion
for partial summary judgment is granted, and defendants’ motion is denied.
FACTUAL AND PROCEDURAL BACKGROUND
The facts of the case are summarized here after applying Local Rule 56, which structures
the presentation of proof at summary judgment.1 Of particular note here is Goya’s failure to
1
The rule “relieve[s] the district court of any responsibility to ferret through the record to discern whether
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Civil No. 10-1168 (BJM) – Opinion and Order
Page 2
either (1) submit a Local Rule 56(b) statement of facts in support of its own motion for summary
judgment, or (2) admit, deny, or qualify defendants’ statement of facts in accordance with Local
Rule 56(c). Defendants raised the matter in their reply motion (Docket No. 35, p. 13), but Goya
did not respond in its surreply. (See Docket No. 36). Because Goya’s failure to follow the local
rule is plain, and because it has had ample opportunity to respond or correct its error, defendants’
statement of uncontested material facts is DEEMED ADMITTED. See P.R. Am. Ins. Co. v.
Rivera-Vásquez, 603 F.3d 125, 130-32 (1st Cir. 2010) (addressing application of Local Rule 56
in cross motions for summary judgment). I nonetheless do not accept the conclusory statements
regarding differences between Goya and Orion’s product labeling as facts, and have not set them
forth below.
(See, e.g., Docket No. 22, p. 13-17, hereinafter “Facts,” ¶ 9) (“Goya’s ‘EL
JIBARITO’ mark creates a substantially different overall impression than Orion’s ‘DEL JIBARITO’
mark.”).
Goya owns the registered trademark EL JIBARITO. (Facts, ¶ 1). The mark was registered
in 1955 under the category of “canned vegetables,” with international class number 29. (Id., ¶
10). Between 1955 and 2007, Goya only sold dry2 pigeon peas under the brand; in 2007, Goya
any material fact is genuinely in dispute,” CMI Capital Market Inv. v. González-Toro, 520 F.3d 58, 62 (1st Cir.
2008), and prevents parties from “shift[ing] the burden of organizing the evidence presented in a given case to the
district court.” Mariani-Colón v. Dep’t of Homeland Sec., 511 F.3d 216, 219 (1st Cir. 2007). The penalty for
noncompliance is severe: “If the party opposing summary judgment fails to comply with Local Rule 56(c), the rule
permits the district court to treat the moving party’s statement of facts as uncontested.” Id. Thus, litigants ignore
the rule “at their peril.” Id.
A motion for summary judgment must be supported by “a separate, short, and concise statement of material
facts, set forth in numbered paragraphs, as to which the moving party contends there is no genuine issue of material
fact to be tried.” Local Rule 56(b). The opposing party must admit, deny, or qualify the moving party’s facts by
reference to each numbered paragraph, and may make a separately numbered statement of material facts. Local Rule
56(c). The moving party may reply and admit, deny, or qualify the opponent’s newly-stated facts, again in a
separate statement and by reference to each numbered paragraph. Local Rule 56(d). Any facts supported by citation
to record evidence and not properly controverted as described by the rule are deemed admitted. Local Rule 56(e).
2
Defendants asked Goya president Carlos A. Unanue López (“Unanue”) to explain this in his deposition:
Q
Okay. I’ve seen many beans that come with water inside the can, that’s not normal?
A
I don’t understand the question.
Q
There’s water inside the can.
A
Ah-hah.
Q
Would they be considered dry beans anyway?
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Civil No. 10-1168 (BJM) – Opinion and Order
Page 3
expanded the brand to rice and other types of beans, specifically, black beans, small white beans,
pinto beans, red kidney beans, and pink beans. (Id., ¶ 11; Docket No. 22-9, p. 8-9). Goya
produced a 15-year sales report of EL JIBARITO brand goods showing sales by case and by total
units sold. (Docket No. 22-13).
Orion has marketed DEL Jibarito goods since February 19, 2009. (Facts, ¶ 17). Orion
registered the trademark DEL JIBARITO with the USPTO, effective March 22, 2011. (Id., ¶ 22).
Orion’s products are “bread and pastries”—essentially, ready-to-eat sweets. (Id., ¶ 12). On
November 4, 2009, Orion approached Goya seeking a partnership to distribute DEL JIBARITO
goods in U.S. markets; at a meeting with Miguel Colón, Goya’s product buyer, Colón expressed
interest in further negotiations, and did not mention Goya’s EL JIBARITO brand. (Id., ¶¶ 18-19).3
Orion was not aware of EL JIBARITO until Goya sued on November 16, 2009. (Id., ¶¶ 2021). Orion has never sold and has no plans to sell canned grains or vegetables. (Id., ¶ 13).
Orion knew there was no trademark similar to DEL JIBARITO registered for “bread and pastries”
or International Class No. 30 in either U.S. or Puerto Rico registries. (Id., ¶ 23). Navarro is not
aware of any instances of confusion between EL JIBARITO and DEL JIBARITO products. (Id., ¶16).
Orion developed the logo and package styling using independent contractors. (Id., ¶ 24).
Goya and Orion labels and product packaging are reproduced at the end of this opinion.
SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate when “the movant shows that there is no genuine
A
The pigeon pea[s], if they are, if they are dr[ied] first, then rehydrated, and then canned
and processed, they do have water in them. They are still called dry pigeon peas. But,
they do have water inside, yes.
Q
Thank you, I just wanted...
A
But they are still called dry pigeon peas,‘gandules secos’.
Q
I just learned something. . . .
(Docket No. 24-4, p. 8).
3
These statements of fact cite Navarro’s unsworn statement under penalty of perjury “verifying” the
summary judgment motion’s allegations and an untranslated letter to Colón written in Spanish. The letter is not
admissible as evidence. See Local Rule 5(g). Nonetheless, I treat the admitted statements of fact as supported by
Navarro’s statement.
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Civil No. 10-1168 (BJM) – Opinion and Order
Page 4
dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(a). A fact is material only if it “might affect the outcome of the suit under the
governing law,” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986), and “[a] ‘genuine’
issue is one that could be resolved in favor of either party.” Calero-Cerezo v. U.S. Dep’t of
Justice, 355 F.3d 6, 19 (1st Cir. 2004). The court does not weigh the facts, but instead ascertains
whether the “evidence is such that a reasonable jury could return a verdict for the nonmoving
party.” Leary v. Dalton, 58 F.3d 748, 751 (1st Cir. 1995).
“[A] party seeking summary judgment always bears the initial responsibility of informing
the district court of the basis for its motion, and identifying those portions of the [evidence] . . .
which it believes demonstrate the absence of a genuine issue of material fact.” Crawford-El v.
Britton, 523 U.S. 574, 600 n.22 (1998) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986)); Fed. R. Civ. P. 56(c)(1). Once this threshold is met, the burden shifts to the nonmoving
party, who “must do more than simply show that there is some metaphysical doubt as to the
material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
However, the court draws inferences and evaluates facts “in the light most favorable to the
nonmoving party,” Leary, 58 F.3d at 751, and an evaluating court may not “superimpose [its]
own ideas of probability and likelihood (no matter how reasonable those ideas may be) upon the
facts of the record.” Greenburg v. P.R. Maritime Shipping Auth., 835 F.2d 932, 936 (1st Cir.
1987). Nonetheless, summary judgment is appropriate where the nonmoving party rests entirely
upon “conclusory allegations, improbable inferences, and unsupported speculation” on any
essential element of the claim. Medina-Muñoz v. R.J. Reynolds Tobacco Co., 896 F.2d 5, 8 (1st
Cir. 1990).
DISCUSSION
Both Goya and defendants moved for summary judgment on the issue of a “likelihood of
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Civil No. 10-1168 (BJM) – Opinion and Order
confusion” under Goya’s Lanham Act claims.
Page 5
Neither motion deals with Goya’s
Commonwealth claims, so I do not address them in this opinion. Cross motions do not alter the
summary judgment calculus; rather, a court “must assess each motion separately,” and draw
inferences against the respective movants. Velásquez Rodríguez v. Mun’y of San Juan, 659 F.3d
168, 175 (1st Cir. 2011). I thus begin with defendants’ motion and then turn to Goya’s.
I.
Defendants’ Motion for Summary Judgment
Likelihood of confusion under First Circuit law is analyzed in light of eight so-called
“Pignons factors”: “(1) the similarity of [the parties’] marks; (2) the similarity of their goods; (3)
the relationship between their channels of trade; (4) the relationship between their advertising;
(5) the classes of their prospective purchasers; (6) any evidence of actual confusion of [those]
consumers; (7) [defendant’s] subjective intent in using [plaintiff’s] marks; and (8) the overall
strength of [plaintiff’s] marks.” Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56,
60-61 (1st Cir. 2008) (citing Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 10
n. 6 (1st Cir. 2008)); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482,
487 (1st Cir. 1981). As these are factors, “[n]o single criterion is necessarily dispositive in this
circumstantial inquiry.” Venture Tape, 540 F.3d at 61 (quoting Borinquen Biscuit Corp. v. M.V.
Trading Corp., 443 F.3d 112, 120 (1st Cir. 2006)).
A.
The USPTO Findings
Defendants ask the court to weigh its trademark registration as “a potent administrative
confirmation of Orion’s position.” (Docket No. 22, p. 10). The documents submitted by
defendants show that the USPTO examining attorney initially denied Orion’s application based
only on a likelihood of confusion with EL JIBARITO, but granted registration following
defendants’ reply. (Docket Nos. 22-2, 22-14, 22-15). But while the First Circuit has given
USPTO determinations weight in deciding “whether a mark is descriptive or inherently
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distinctive,” this is a different inquiry from whether a finding of no implied likelihood of
confusion deserves weight. Cf. Borinquen Biscuit, 443 F.3d at 119. Defendants offer no
authority squarely on point; their passing reference to the principle that courts defer to agency
interpretations of the statutes they enforce is inapposite, as there is no dispute of statutory
interpretation here. Nor have defendants shown that the examining attorney reviewed all—or
indeed, any—of the evidence offered now, which some courts find necessary before giving a
PTO decision evidentiary value. See A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,
237 F.3d 198, 220-21 (3d Cir. 2000) (collecting cases). Finally, they articulate no preclusion
argument. See Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F3d 244, 249-56 (3d
Cir. 2006) (analyzing preclusive effect of cancellation decision). Given defendants’ failure to
develop any reason why their registration has probative value, I do not consider it any further.
B.
Similarity of the Marks
“The degree of similarity between two marks . . . is determined by analyzing their sight,
sound, and meaning.” Boston Duck Tours, 531 F.3d at 24. This is an analysis of the “total effect
of the designation, rather than a comparison of individual features.” Pignons, 657 F.2d at 487.
The only difference between the EL JIBARITO and DEL JIBARITO names themselves is a
preposition: while “el” means “the,” “del” means “from the” or “of the,” depending on context.
But generic words in a compound phrase bear less weight in the similarity analysis. See Boston
Duck, 531 F.3d at 24. The only phrasal distinction here is in grammatical function words; thus, a
rational factfinder could conclude that the phrases themselves are substantially more similar than
not.
As for the logos, viewing them “sequentially as if one were in the context of the
marketplace rather than in a side-by-side comparison,” id. at 29 (citation and quotation marks
omitted), it would similarly be reasonable to conclude that the common elements—the man
centered in front of a cultivated field, wearing a straw hat, collared shirt, and with busy hands,
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with the brand name in stylized writing on a superimposed ribbon—permit a finding of
substantial similarity.
Defendants also assert that “Orion’s ‘DEL JIBARITO’ products prominently highlight
Orion as the source in the boxes, individual wrappers, and in every possible manner.” (Docket
No. 22, p. 6). It is true that “in certain circumstances otherwise similar marks are not likely to be
confused where used in conjunction with the clearly displayed name and/or logo of the
manufacturer.” Pignons, 657 F.2d at 487 (collecting cases). But those circumstances involve
marks appearing “in close proximity with an equally prominent and uniquely identifying
designation,” id., and the photos defendants submitted do not indicate such proximity of the
Orion logo. (See, e.g., Docket No. 22-7, reproduced infra page 17).
Thus, under the standard applicable to Orion’s motion for summary judgment, “while the
marks are not identical, they are at least similar for the purposes of the present review.” See
Astra Pharm. Prods., Inc. v. Beckman Instrs., Inc., 718 F.2d 1201, 1205 (1st Cir. 1983). The
evidence permits a finding in favor of Goya on this factor.
C.
Similarity of the Goods
Defendants argue that Goya only markets canned beans and rice with the “El Jibarito”
brand, while Orion makes ready-to-eat sweets; thus, they say “it is inconceivable that products so
essentially dissimilar in nature could generate any substantial likelihood of confusion in the mind
of any reasonably cautious average consumer.” (Docket No. 22, p. 7) (emphasis added).
This distinction does not mean what defendants think it means. Summary judgment may
be appropriate where there is a plain difference in the overall class of goods, though they share
the same field. For instance, a “massive instrument, weighing from 350 lbs. to 550 lbs.” is so
dissimilar from “local anesthetics, cardiovascular medicines, and prefilled syringes” that they
cannot be considered similar goods at summary judgment. Astra, 718 F.2d at 1205-06. The
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uncontested differences between the products—canned beans and rice versus packaged
confections—are not substantial enough to be conclusive on this point.4
Defendants also argue that there are significant differences in the goods because Orion’s
trademark is registered in “International Class No. 30,” while Goya’s registration is in
“International Class No. 29.” (Docket No. 22, p. 7). But this administrative classification adds
nothing to the substantive analysis; here, as another district court similarly observed, “[t]here is
no evidence that a typical consumer has any knowledge of International Classifications or that
any perception of similarity flows from that classification.” S Industries, Inc. v. JL Audio, Inc.,
29 F. Supp. 2d. 878, 891 (N.D. Ill. 1998).
Viewed in the light most favorable to Goya, the evidence of differences between the
products’ varieties is not so conclusive as to require a finding that they are not substantially
similar.
D.
Relationships among Channels of Trade, Advertising, and Classes of
Prospective Purchasers
Likelihood of confusion “must be based on the confusion of some relevant person; i.e., a
customer or purchaser.” Astra, 718 F.2d at 1206. Defendants assert that “the products do not
share the same channels of trade, advertising, or prospective purchasers.” (Docket No. 22, p. 8).
However, the only evidence they cite is co-defendant Navarro’s “verification” adopting the
motion’s factual averments. (Docket No. 22, p. 8; Docket No. 22-10). In short, their position
rests on nothing but the motion’s own conclusory allegations, which are not sufficient to meet
their summary judgment burden of demonstrating an entitlement to judgment as a matter of law.
4
Moreover, though Goya does not raise this point, purchasers of “staple, relatively inexpensive
comestibles, subject to frequent replacement . . . have long been held to a lesser standard of purchasing care.” See
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984) (comparing identical marks for
bread and cheese and affirming PTO’s denial of registration); accord 4 McCarthy § 23:95 (“The ordinary prudent
purchaser does not give much care or thought to the everyday purchase of relatively inexpensive items.”) (collecting
cases).
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In contrast, Goya points to company president Carlos Unanue’s testimony that both products are
sold in supermarkets. (Docket No. 23, p. 4; Docket No. 24-4, p. 19). While this is not an
overwhelming submission of evidence, it nonetheless would be sufficient to establish that Orion
and Goya products are both purchased by consumers shopping for food in supermarkets.
E.
Evidence of Actual Confusion
Goya points to no evidence of actual confusion. But even though “evidence of actual
confusion is often deemed the best evidence of possible future confusion, proof of actual
confusion is not essential to finding likelihood of confusion.” Borinquen Biscuit, 443 F.3d at
120 (1st Cir. 2006) (citation and quotation marks omitted). While this factor can only weigh in
favor of Orion, it is not dispositive.
F.
Orion’s Subjective Intent
As defendants point out, Goya offers no evidence of bad faith in Orion’s adoption of the
DEL JIBARITO brand.
In other words, “despite their general, conclusory allegations of
‘willfulness,’ plaintiffs have not adduced a scintilla of evidence of palming off, intent to deceive,
or any effort whatsoever [by defendants] to benefit from [Goya’s] reputation through their use of
the term [Jibarito].” Pignons, 657 F.2d at 491 (quoting Pignons S.A. de Mecanique de Precision
v. Polaroid Corp., 498 F. Supp. 805, 817 (D. Mass. 1980)). Though Goya accuses defendants of
acting with “unclean hands” by registering DEL JIBARITO after Goya brought suit, Goya
articulates no reason why this purely legal maneuver reflects an intent to deceive customers or
otherwise benefit from Goya’s “El Jibarito” brand. Since Goya “provides neither the necessary
caselaw nor reasoned analysis to show that [it] is right about any of this,” this factor cannot
weigh in its favor. See Velásquez Rodríguez, 459 F.3d at 176.
G.
Strength of Goya’s Trademark
To assess a mark’s strength, courts “look to ‘the length of time the mark has been used,
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its renown in the plaintiff’s field of business, and the plaintiff’s actions to promote the mark.’”
Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8, 19 (1st Cir. 2004) (quoting Star Fin.
Servs. v. Aastar Mortg. Corp., 89 F.3d 5, 11 (1st Cir. 1996)). In the narrow cases where a
defendant attacks the plaintiff’s mark as generic and unprotectable, the mark’s conceptual
distinctiveness may be weighed as well. Boston Duck Tours, 531 F.3d at 16-17. Pointing to
Unanue’s deposition testimony, Goya asserts that (1) “El Jibarito” has been marketed for years,
(2) it is a market leader in dry pigeon peas, and (3) it is a very well-known brand. (Docket No.
23, p. 4-5). Goya’s points are not dispositive, as “the muscularity of a mark, in and of itself,
does not relieve the markholder of the burden to prove a realistic likelihood of confusion.” Int’l
Ass’n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d
196, 206 (1st Cir. 1996). I note, however, that defendants’ arguments are entirely unpersuasive
and border on irrelevant. First, citing a chart that lists the year-to-year sales volume of EL
JIBARITO goods, defendants inexplicably conclude that sales have been “negligible in Puerto
Rico and probably elsewhere as well.” (Docket No. 22, p. 9, citing Docket No. 22-13). Yet the
chart does not list relative market share or provide other information from which to draw any
conclusion, positive or negative, about the brand’s market renown. Second, defendants argue
that because “Goya’s own product buyer seemed utterly oblivious to the existence of the mark,
making no mention of it whatsoever,” it must be “weak.” (Id.) (emphasis added). But defendants
never explain why this has probative value. Even the intermediate assumption—that the buyer
said nothing because he or she did not know about EL JIBARITO—is speculative, as silence
equally suggests that Goya’s agent preferred to raise the trademark matter with his or her
superiors rather than a prospective business partner. Finally, it is unclear why “Goya’s persistent
failure to identify itself as the source of the ‘EL JIBARITO’ products even suggests a certain
reluctance on the part of Goya to be associated with” the brand. (Docket No. 22, p. 9-10).
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Trademarks include those marks “used . . . to indicate the source of the goods, even if that source
is unknown.” 15 U.S.C. § 1127. Regardless, any such “reluctance” is not material to the mark’s
strength in the marketplace. In short, only Goya has offered competent evidence addressing this
factor.
H.
Summary
While there is no conflicting evidence to compare or credibility determination to make in
this case, defendants have not shown that they prevail as a matter of law. Of the eight Pignons
factors, only the actual confusion and subjective intent factors are so devoid of evidence favoring
Goya that they could not be rationally weighed in its favor. Therefore, defendants are not
entitled to summary judgment.
II.
Goya’s Motion for Summary Judgment
Since the same legal contentions and evidentiary submissions are at issue in Goya’s cross
motion, I proceed directly to the Pignons factors, treating Goya as the moving party.
A.
Similarity of the Marks
The factual composition of the names, logos, and packaging is uncontested, and do not
permit a rational conclusion that “their sight, sound, and meaning” as a whole, “as if one were in
the context of the marketplace,” Boston Duck Tours, 531 F.3d at 24, 29, are not substantially
similar. Defendants argue that “the countryman” and “from the countryman” distinguish the
products’ sources, but offer no analysis or authority to support this conclusion. To whatever
extent this minimal distinction in meaning could be given weight, the “D” in “Del” makes
precisely one letter’s difference in sight and sound.
The similarity of the word mark is not mitigated when it is incorporated into the logos.
Of course, there are certain distinctions between the logos: Goya’s lettering is colored in a
blue/white gradient with a black outline, Orion’s is red with a white outline; Goya uses a green
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ribbon, Orion uses gold; Orion adds wheat to form a crest while Goya does not; Goya’s character
is holding a hoe, while Orion’s has a sack over his shoulder; Goya’s rolling countryside has a
farmhouse, palm trees, a leafy plant, and a rocky mountain in the background; Orion’s hills
feature only a red flowering tree. And there are overall differences in the visual style of the two
drawings, such as the weight and sharpness of lines, harshness of shadows, and depiction of
small details. But the legal standard does not call for a mechanical computation of the relative
differences and similarities in two marks. Rather, bearing in mind the ultimate question of
whether there is a likelihood of confusion, the inquiry is whether the evidence could permit a
rational conclusion that the logos are not similar on the whole. See also Baker v. Master Printers
Union of N.J., 34 F. Supp. 808, 811 (D.N.J. 1940) (“[F]ew would be stupid enough to make
exact copies of another’s mark or symbol . . . the most successful form of copying is to employ
enough points of similarity to confuse the public with enough points of difference to confuse the
courts.”) (quoted in Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 30 (1st Cir. 1989)). Given
the almost perfect identity of the marks’ sound and meaning, defendants have failed to show that
the differences in appearance could logically render them dissimilar under the applicable legal
standard. See Boston Athletic, 867 F.2d at 30 (marks’ identical meaning “overcomes any
difference in appearance between them.”). This factor, therefore, weighs in Goya’s favor.
B.
Similarity of the Goods
It is uncontested that both brands cover packaged, consumer-market foods, with the
primary distinction being that Orion’s products are generally ready-to-eat sweets, while Goya
sells beans and rice. But “the more similar the marks are, the less necessary it is that the
products themselves be very similar to create confusion.” Attrezzi, LLC v. Maytag Corp., 436
F.3d 32, 39 (1st Cir. 2006) (citing 3 McCarthy on Trademarks and Unfair Competition § 23:20.1
& nn. 1-2 (4th ed. 2005)). Despite defendants’ asseverations, they point to no evidence of any
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other relevant difference between the products. Thus, at best, these differences could only
weakly weigh against finding an overall likelihood of confusion.
C.
Relationships among Channels of Trade, Advertising, and Classes of
Prospective Purchasers
As discussed above, the only competent evidence on this point indicates that both Goya
and Orion products are sold to consumers in supermarkets; defendants offer neither evidence nor
argument that would show any distinction in the products’ channels of trade, advertising, or
classes of purchasers. These elements therefore, can only be weighed in Goya’s favor.
D.
Evidence of Actual Confusion and Orion’s Subjective Intent
For the same reasons discussed regarding defendants’ motion, Goya’s failure to adduce
any evidence of confusion or Orion’s bad faith prevents these factors from weighing in its favor
at summary judgment. But see Borinquen Biscuit, 443 F.3d at 120 (absence of actual confusion
is not dispositive).
E.
Strength of Goya’s Trademark
To establish the strength of its mark, Goya points to evidence that the “El Jibarito” brand
has been used in commerce since 1946, is the market leader in dry pigeon peas in U.S. Hispanic
markets, and has been expanded to other types of beans and rice in the last five years. (Docket
No. 23, p. 4-5). As explained above, defendants have failed to either offer competent evidence
or persuasive argument rebutting this factor. Since there is no factual dispute, and the evidence
uniformly supports Goya’s position, this factor must weigh in favor of Goya.
F.
Summary
Goya has established that there is no genuine dispute of material fact, and that even
viewing the evidence favorably to defendants, the similarity of marks, relationships among the
channels of trade and classes of purchasers, and strength of its own mark weigh towards a
finding of substantial likelihood of confusion. Defendants, for their part, have shown that the
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evidence does not weigh in Goya’s favor with respect to the similarity of goods, and that Goya
has not provided any evidence of actual confusion or of Orion’s subjective bad faith. Viewed as
a whole, the factors weighing in Goya’s favor—that Orion’s goods are marketed to the same
consumers, using the same outlets, and using similar names and logos as Goya’s long-established
and expanding brand—necessarily overcome the adverse inferences that may be drawn from the
degree of difference between the products and Goya’s failure to produce evidence of actual
confusion or bad faith. Therefore, Goya is entitled to summary judgment regarding the existence
of a likelihood of confusion.
CONCLUSION
For the foregoing reasons, defendants’ motion for summary judgment is DENIED.
Goya’s motion for summary judgment is GRANTED. Goya is entitled to a partial judgment
finding that there is a substantial likelihood of confusion between Orion’s DEL JIBARITO brand
and Goya’s EL JIBARITO brand.
IT IS SO ORDERED.
In San Juan, Puerto Rico, this 29th day of March, 2012.
S/Bruce J. McGiverin
BRUCE J. McGIVERIN
United States Magistrate Judge
Goya Foods, Inc. v. Orion Distributors, Inc.
Civil No. 10-1168 (BJM) – Opinion and Order
APPENDIX 1: “JIBARITO” LOGOS
Goya EL JIBARITO label variants. (Docket Nos. 23-4, 23-5).
Orion DEL JIBARITO label variants. (Docket No. 22-3).
Page 15
Goya Foods, Inc. v. Orion Distributors, Inc.
Civil No. 10-1168 (BJM) – Opinion and Order
APPENDIX 2: PACKAGING
EL JIBARITO rice packaging. (Docket No. 22-4, p. 2).
Example of Orion DEL JIBARITO packaging. (Docket No. 22-6, p. 4).
Page 16
Goya Foods, Inc. v. Orion Distributors, Inc.
Civil No. 10-1168 (BJM) – Opinion and Order
APPENDIX 3: PHOTOGRAPHS OF PRODUCTS
Sample of Goya EL JIBARITO product. (Docket No. 22-7).
Samples of Orion DEL JIBARITO products. (Docket No. 22-5).
Page 17
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