Bernatello's Pizza, Inc. v. Hansen Foods, LLC

Filing 26

ORDER granting 7 Motion for Preliminary Injunction. The parties will submit proposed injunction orders and proposals for adequate security by 4/8/2016. If the parties are unable to submit joint submissions, plaintiff may have until 4/8/2016 to submit its proposal and defendant may have until 4/15/2016 to submit any objections. The parties shall file electronic copies of their hearing exhibits by 4/1/2016. Signed by District Judge James D. Peterson on 3/25/2016. (arw)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

BERNATELLO’S PIZZA, INC.,
Plaintiff,
v.

OPINION & ORDER
16-cv-65-jdp

HANSEN FOODS, LLC,
Defendant.

Plaintiff, Bernatello’s Pizza, Inc., brings claims of trademark infringement and unfair
competition against defendant, Hansen Foods, LLC. Bernatello’s has federal trademark
registrations for the word mark BREW PUB PIZZA and for a design mark that incorporates
those words, both for use with frozen pizza. Bernatello’s contends that Hansen’s recently
adopted BREWHAUS and BREW TIME marks infringe its rights, and Bernatello’s seeks a
preliminary injunction.
The court held a day-long evidentiary hearing on the motion on March 18, 2016.
Both sides presented evidence. Based on the evidence presented at the hearing, and the
documentary evidence submitted with the parties’ briefs, the court concludes that
Bernatello’s is entitled to a preliminary injunction against Hansen’s use of marks that include
the term “brew.” The court will ask the parties to submit a proposed order for injunction that
will provide an appropriate phase-out period to allow Hansen to exhaust its inventory and to
allow for an orderly change to a new brand name. The parties should also submit their
proposals, jointly if possible, for an appropriate injunction bond.

FINDINGS OF FACT
The court must address a preliminary issue before setting out the findings of fact. The
court’s rules for motions for injunctive relief require the moving party to set out the factual
basis for the injunction in a statement of proposed findings of fact, and the party must cite
evidence to support each proposed fact. See Procedure to be Followed on Motions for
Injunctive Relief, available on the court’s website. If the party opposing the injunction
disputes any of the proposed facts, the opposing party must adduce evidence to put those
facts in dispute.
Hansen did not properly oppose Bernatello’s proposed facts because Hansen did not
adduce evidence in opposition to them. Instead, Hansen objected to Bernatello’s facts on the
grounds that it lacked sufficient knowledge, or on the grounds of unspecified deficiencies in
the foundation for the evidence supporting the proposed fact. Establishing foundation is part
of the moving party’s obligation, so the court would consider foundational objections, if they
were specific and well-grounded. But Hansen’s objections were not specific.1 Bernatello’s has
amply supported its proposed facts with affidavit evidence, and Hansen’s foundational
objections are overruled. Bernatello’s proposed facts, Dkt. 14, are deemed established.
Hansen’s own proposed findings of fact in opposition to the motion were not
authorized by the court’s injunction procedures, because replies are not authorized, and thus
the moving party has no opportunity to respond to facts proposed by the non-moving party.

1

Some of Hansen’s own affidavit evidence lacks foundation. Hansen’s evidence purports to
be based substantially on the personal knowledge of John Frey, its chief operating officer.
Frey has been involved with Hansen since 2013. But Frey’s declaration begins by rehearsing
the history of Hansen Foods beginning in 1912, which is obviously not a matter within Frey’s
personal knowledge.

2

The court will nevertheless regard some of Hansen’s proposed factual background as
established because Bernatello’s did not dispute those facts at the hearing.
Based on the parties’ written submissions and the evidence presented at the hearing,
the court finds the following facts.
Bernatello’s Pizza, Inc., is a Minnesota corporation with its corporate headquarters in
Edina, Minnesota. Bernatello’s has manufactured and distributed frozen pizzas since 1982.
Among the Bernatello’s brands are Bellatoria, Orv’s, and Roma, in addition to Brew Pub
Pizza, the brand at issue in this litigation. Bernatello’s brands vary in price, quality, and
packaging to target distinct consumer groups. Brew Pub Pizza is in the “premium”
(sometimes referred to as “super-premium”) category of frozen pizza. The premium category
is characterized by abundant high-quality toppings, particularly a large amount of cheese.
Pizzas in the premium category generally retail for $9 to $11.
Bernatello’s introduced Brew Pub Pizza in 2012. Bernatello’s engaged Tom Jacobsen,
an independent consultant with extensive industry experience in frozen foods, particularly
pizza, to assist with its creation of a new pizza brand. Jacobsen identified the premium
category as one likely to experience growth, whereas down-market segments of the frozen
pizza market were stable or shrinking. In early 2012, Jacobsen came up with the name “Brew
Pub” for a Bernatello’s brand because it would capitalize on the growing interest in craft beer.
As it was later designed and executed, the Brew Pub Pizza packaging includes a design
of a keg tap to reinforce the craft beer and pub associations. The Brew Pub Pizza packaging
also displays the term “Lotzza Motzza” as a prominent element. Brew Pub Pizza uses high
quality ingredients, including sausages that contain no fillers, and real Wisconsin cheese
grated into wider strips than commonly used on frozen pizzas. The retail price of a Brew Pub

3

Pizza is ordinarily $10.99, but on special promotions it may be priced as low as $5.99. Brew
Pub Pizzas are manufactured in twelve varieties in a multi-serving portion size and five
varieties in single-serving sizes. Each Brew Pub Pizza is sealed in a clear wrap with a small
circular label on the top center of the pizza, a format known as “bullseye” packaging. Bullseye
packaging allows consumers to see the pizza ingredients, which is considered an advantage
for premium pizza.
Bernatello’s has three federal trademark registrations pertinent to this case:
BREW PUB PIZZA (words only); U.S. Reg. No. 4,373,576;
application date June 29, 2012; registration date July 23, 2013;
BREW PUB PIZZA and design; U.S. Reg. No. 4,431,990;
application date March 21, 2013; registration date November
12, 2013;
BREW PUB; U.S. Reg. No. 4,906,320; application date April
10, 2014; registration date February 23, 2016.
Bernatello’s also has several applications pending for related terms, including IT’S BREW
TIME, BREW, and PUB, although these applications were made after the current dispute
arose, and thus they have no bearing on the issues before the court.
Bernatello’s markets its frozen pizzas using a “direct store delivery” model, in which it
uses its own personnel and fleet of trucks to deliver products directly to grocery stores. It uses
an independent distributor for what it calls “small format” retailers, primarily convenience
stores and taverns.
Brew Pub Pizza has been commercially successful: in 2013, Bernatello’s sold 2.4
million units, generating $12.8 million in revenue; in 2014, 4.8 million units, producing
$24.6 million in revenue; and in 2015, 7.8 million units, representing $39.8 million in

4

revenue. In the year ending September 2015, Bernatello’s Brew Pub Pizza was a top-ranked
brand among all frozen pizza brands in the Midwestern market.
At the time of its introduction in 2012, Brew Pub Pizza was the only premium frozen
pizza sold or promoted as a “pub-style” or “tavern-style” pizza. No other frozen pizza was
marketed with the term “Pub” or “Brew” on its packaging. However, since the introduction of
Brew Pub Pizza, several competitors have marketed premium pizza as either tavern-style
pizza (Green Mill Restaurant, Defense Ex. 2) or pub-style pizza (P’Mos Pub Pizza Co.,
Defense Ex. 3; Luige’s Big Daddy, Defense Ex. 4).2
Hansen Foods, LLC, is a Wisconsin limited liability company with a principal place of
business in Green Bay, Wisconsin. Hansen was founded in 1912 as a dairy delivery business,
and its business has expanded to include private label pizza manufacturing. Beginning in
1995, Hansen produced Pep’s brand pizzas for Pep Simek, who had been the founder of
Tombstone Pizza. After Simek died in 2013, Hansen purchased the Pep’s brand and began
marketing frozen pizza under its own label. At its peak, Hansen produced approximately
800,000 frozen pizzas a year under its two brands: Pep’s Original, mid-market pizza; and Big
Ben, in the premium category. Hansen has other lines of business that are not pertinent to
the trademark issues before the court.
In 2013, Michael Fechter and John Frey bought Hansen. At the time, Hansen’s frozen
pizza sales had diminished to approximately 300,000 pizzas per year. Frey and Fechter had
been partners in a container management and services company that sold beer kegs and
valves and related services. In early 2014, Hansen moved distribution of its pizzas to Cedar

2

Because the paper exhibits provided at the hearing will not scan well, the court will ask the
parties to file electronic copies of their hearing exhibits.

5

Crest Ice Cream, which in addition to manufacturing and distributing its own products,
served as a third-party distributor for other grocery products and had an extensive
distribution network, primarily in Wisconsin.
In 2014, Cedar Crest advised Hansen that it needed to update its brand to prevent a
loss of market share. Hansen began the process of rebranding its pizzas in 2015. Hansen
management decided to include the Pep’s name on all its pizza. Craig Bauer, the marketing
director of Hansen Foods, advised dropping the Big Ben name from its premium pizza, which
the management group of Hansen approved in the middle of February 2015. Bauer
researched the pizza industry online, reviewing existing premium category pizzas, and on the
basis of this review he concluded that there was a trend toward heavy-topping, tavern-style
pizzas. Bauer wanted to avoid the same graphic look as the existing products, so he reviewed
the websites for restaurants and breweries, particularly microbreweries. He found the websites
and graphic presentation of microbrews to be a source of inspiration for the graphic
presentation of the new Hansen premium pizza brand. He came up with about four proposals
for the name, including Brewhaus, Ale House, Tap Room, and Brew Time. In about the
middle of 2015, he settled on Brewhaus as the proposed name, which he thought evoked a
more upscale product. There is no evidence that Bauer or anyone else at Hansen did a search
of trademark registrations or otherwise sought a legal opinion concerning the legal availability
of the name Brewhaus.
During the fall and winter of 2015, Hansen struck a deal with Topco, a supermarket
distribution cooperative with more than 50 members. Topco’s members include the major
midwest grocery store chains Coborn’s, Inc., HyVee, Inc., Meijer, Inc., Piggly Wiggly
Midwest, LLC, and Roundy’s Supermarkets, Inc. Hansen created a variation of the Brewhaus

6

brand called “Brew Time” for distribution through Topco. Topco provided some feedback on
the design of the Brew Time label, but they accepted the name proposed by Hansen, Brew
Time.
Soon enough, Bernatello’s personnel found out that Hansen was rebranding its
premium pizza and planning to use the name Brewhaus. Bernatello’s general manager James
Cousin called Fechter on December 2 or 3, 2015, to object to Hansen’s proposed use of the
name Brewhaus. The parties may have engaged in some further discussions of the matter, but
there is no evidence that Bernatello’s ever acquiesced to Hansen’s use of Brewhaus. But
Hansen proceeded anyway. On December 9, 2015, Hansen filed an intent-to-use application
for the mark BREWHAUS for pizza. (U.S. Application Serial No. 86844156.) And, despite
Bernatello’s objections, Hansen proceeded to market with both Brewhaus pizza and Brew
Time pizza. Brewhaus Pizza was first available to the market on January 21, 2016. Brew
Time was first available in February 2016.
In a sell sheet developed to promote the Brew Time brand to Topco members, the
Brew Time product was described as follows:
The Brew Time Brand was developed exclusively for Topco and
our members by Hansen Foods (Green Bay) as a private brand
solution for what has recently emerged as a very popular &
rapidly growing segment within the pizza category—the Brew
Pub Style! Per IRI, the leading national brand, Lotzza Motzza,
is 130% up in sales over the same period last year, and is
expected to grow even more in 2016. Like the brand, our Brew
Time pizzas claim ½ pound of real cheese and are heavily
topped with premium ingredients. The Brew Time brand can
offer your customers a more affordable private brand alternative
that delivers the same high quality pizza that is just as capable
of inducing a cheese coma.
Plaintiff’s Ex. 31. The Topco sell sheet indicates that the pricing for Brew Time pizza would
be $6.99 every day, and $5.99 on promotion.

7

At the hearing, Michael Fechter, Hansen’s chief executive officer, was unable to
estimate the sales of Brewhaus pizza. As for Brew Time, he testified that Hansen had filled
one purchase order for two truckloads, which would be $20,000 worth of pizza.
Bernatello’s submitted evidence that management from two grocery store chains,
Coburn’s and Trig’s, have expressed concerns that the Brewhaus brand would create a
likelihood of confusion with the Brew Pub brand.
The court has subject matter jurisdiction over Bernatello’s claims pursuant to 28
U.S.C. § 1331, because they arise under federal law.

ANALYSIS
To obtain preliminary injunctive relief, Bernatello’s must demonstrate: (1) that it has
a better-than-negligible chance of success on the merits; and (2) that it has no adequate
remedy at law and that it would suffer irreparable harm without preliminary relief. Promatek
Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 811 (7th Cir. 2002), as amended, (Oct. 18, 2002).
Once these two preliminary elements are satisfied, Bernatello’s must then show that the harm
it would suffer without the injunction would outweigh the harm that Hansen would suffer if
the injunction issued. Id. Bernatello’s must also show that the public interest would not be
negatively affected by the injunction. Id. The stronger plaintiff’s case on the merits, the less
the balance of harms needs to tip in favor of plaintiff to support the injunction. Id.
A. Bernatello’s likelihood of success on the merits
To succeed on its Lanham Act claims, Bernatello’s must show: (1) that it has a
protectable interest in its trademarks; and (2) that Hansen’s use of the marks is likely to

8

cause confusion among consumers. Packman v. Chi. Tribune Co., 267 F.3d 628, 638 (7th Cir.
2001).
Bernatello’s federal trademark registrations for the word mark BREW PUB PIZZA
and for the design incorporating those words are prima facie evidence of the validity and
Bernatello’s ownership of these marks. In view of its federal registrations, Bernatello’s has the
presumptively exclusive nationwide right to use those trademarks in connection with frozen
pizza. Hansen has not raised any objection to the validity of Bernatello’s registrations, and it
does not contend that Bernatello’s does not have a protectable mark. The question is whether
Hansen’s use of Brewhaus and Brew Time would pose a likelihood of confusion with
Bernatello’s Brew Pub Pizza marks.
In the Seventh Circuit, the likelihood of confusion analysis is parsed into seven
factors: (1) the similarity of the marks; (2) the similarity of the products; (3) the area and
manner of concurrent use; (4) the degree of care exercised by consumers; (5) the strength of
the plaintiff’s marks; (6) any evidence of actual confusion; and (7) the defendant’s intent to
palm off its goods as plaintiff’s. Promatek Indus., 300 F.3d at 812. No single factor is
dispositive; courts weigh and balance the factors depending on the circumstances involved.
CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 678 (7th Cir. 2001).
1. Similarity of the marks
Brewhaus is, on its face, highly similar to Brew Pub. At the hearing, both sides
acknowledged that “Brew” is the dominant portion of both marks. Brewhaus is synonymous
with Brew Pub; the similarity at this level is undeniable. The similarity is less striking with
Brew Time. But in light of the parties’ concession that “Brew” is the dominant portion of
both marks, Brew Time and Brew Pub are also strongly similar as marks for frozen pizza.

9

Hansen’s primary argument with respect to similarity of the marks is that the BREW
PUB PIZZA trademark is just one aspect of a complex product identity in which Brew Pub
plays only a subsidiary role. On the package itself, the Brew Pub Pizza name and logo is
smaller than the term Lotzza Motzza, which Hansen contends is the dominant part of the
product identity. On the Brewhaus package, the Brewhaus name is larger, and the package
also includes “Pep’s Pizza.” And, as Hansen rightly contends, the graphic similarity of the
two labels is not strong. Although both products use bullseye packaging, that packaging
format is apparently the universal choice for frozen pizzas in the premium category.
At the hearing, Bernatello’s showed that pizza packaging often includes wording that
is larger and more prominent than the pizza brand. But Bernatello’s examples showed
descriptive terms that were larger than the brand, such as the term “Pan Pizza” on the
Bellatoria package; the term “Naturally Rising” on the Freschetta package; and the term
“Rising Crust” on the Red Barron package. Defense Ex. 39. This argument is much weaker
with respect to the term “Lotzza Motzza” that Bernatello’s uses. The term is somewhat
descriptive because Brew Pub Pizza contains a great deal of mozzarella cheese. But
Bernatello’s has sought and secured federal registration for “Lotzza Motzza,” which forecloses
any argument that Bernatello’s regards Lotzza Motzza as merely a descriptive term.
Bernatello’s cannot dispute that Lotzza Motzza is actually part of its brand identity.
Moreover, Hansen adduced evidence that showed that some consumers believe Bernatello’s
brand to be Lotzza Motzza, or at the very least that the brand is Brew Pub Lotzza Motzza.
Hansen has a decent argument that the trade dress of the two products, and the complex
brand identity, helps distinguish the two products.

10

But Hansen’s argument has its limits, primarily because the trademarks are not
encountered only on packages displayed side-by-side on the grocery store shelf. Bernatello’s
has demonstrated that both parties promote their brands with pizza oven trailers from which
products and samples are distributed at public events. The Bernatello’s trailer features the
Brew Pub logo very prominently, and the Hansen trailer features the name Brewhaus most
prominently. Bernatello’s also adduced evidence that in social media promotion, Bernatello’s
refers to its pizza as Brew Pub Pizza, and in grocery store advertising, the products are
sometimes only identified by name, without a photograph of the product itself. The bottom
line is that consumers will regularly encounter the word marks Brew Pub Pizza and Brewhaus
in the marketplace, and not just in side-by-side comparison of the packaging. The proper
standard for evaluating the similarity of the marks is not whether the consumer could detect
a difference in a side-by-side comparison. Rather, the standard is whether a consumer familiar
with plaintiff’s trademark would be confused if he or she encountered the defendant’s mark.
See Packman, 267 F.3d at 643 (citing Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 898 (7th Cir.
2001)).
Bernatello’s has made a strong showing that the marks are similar enough to make
consumer confusion likely. This factor counts in favor of Bernatello’s, particularly with regard
to the Brewhaus mark.
2. Similarity of the products
The products are the same: premium frozen pizzas. This factor counts strongly in
favor of Bernatello’s.

11

3. The area and manner of concurrent use
The area and manner of use is highly similar. Both parties sell their products in
grocery stores, convenience stores, and taverns. Although Bernatello’s area of distribution is
somewhat larger than Hansen’s, the most likely area of distribution of Hansen’s products lies
within Bernatello’s geographic market. Bernatello’s distributes its own products to grocery
stores through its direct store distribution method, whereas Hansen uses a third-party
distributor. But that is a distinction of no real consequence because Hansen reaches the same
types of retailers, including some of the very same retailers. The bottom line is that the
ultimate consumers are the same and that the intermediate decision makers, the owners of
grocery stores, taverns and convenience stores, are also the same.
This factor also counts strongly in favor of Bernatello’s.
4. Degree of consumer care
The degree of care exercised by consumers of premium frozen pizza is disputed.
Bernatello’s adduced testimony, albeit somewhat conclusory, that frozen pizza is typically an
impulse purchase in which the care exercised by the consumer (or lack thereof) does not
alleviate concern over potential confusion. Hansen adduced no evidence to contradict this
testimony. But Hansen cites authority holding that a $20 restaurant purchase was not one
that was so impulsive as to have the consumer care factor count in favor of the plaintiff.
Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1045 (7th Cir. 2000). Low-priced
grocery store items are usually considered the prototype of the impulsive purchase. See, e.g.,
Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 739 (7th
Cir. 2013). But premium frozen pizza is not at the bottom of the market like the “belly-filler”

12

pizzas that the parties acknowledge are low-priced commodities purchased primarily because
of price.
Although the parties produce low-priced items that would not prompt the kind of
deliberation that one would bring to the purchase of an automobile, the evidence does not
establish that consumers are so cavalier in their choices that confusion is likely. This factor is
neutral.
5. Strength of the Brew Pub Pizza mark
The strength of a trademark refers to the mark’s distinctiveness, which indicates its
propensity to identify the provider of a product, and to distinguish that product from those
of others. Strength of trademarks is commonly conceptualized as a spectrum, with coined
terms and arbitrary marks on the strong end, suggestive terms in the middle, and descriptive
terms on the weak end. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)
(adopting Judge Friendly’s formulation in Abercrombie & Fitch Co. v. Hunting World, Inc., 537
F.2d 4, 9-11 (2d Cir. 1976)). Generic terms for products, such as “pizza” in this case, are so
weak that, on their own, they are not entitled to trademark protection.
The term “Brew Pub” is not descriptive of frozen pizzas, although it evokes a beverage
that is closely associated with pizza. Bernatello’s presented evidence that it was the first
provider to associate premium frozen pizza with beer, brewing, pubs, or taverns. Now,
however, it is more commonplace for premium frozen pizza to be identified as “pub-style” or
“tavern-style.” Nevertheless, as Bernatello’s points out, it is the only entity to use the term
“brew” in connection with its pizza, or at least it was until Hansen came along. Thus, Brew
Pub Pizza is itself a medium-strong suggestive mark.

13

Bernatello’s also contends that its mark is strengthened because of the substantial
marketing effort that supports it. Bernatello’s adduced evidence that it had invested nearly
$4 million on marketing and advertising Brew Pub Pizza since 2012. Bernatello’s also
adduced evidence showing significant success in the marketplace. Hansen did not dispute the
evidence that Brew Pub Pizza is the leading premium frozen pizza brand, and in fact is
among the leaders in frozen pizza sales in all categories.
The strength of the mark factor tips in favor of Bernatello’s.
6. Incidents of actual confusion
Evidence of actual consumer confusion can be very compelling evidence of the
likelihood of confusion, but it is not strictly required. CAE, Inc., 267 F.3d at 685.
Bernatello’s presented testimony from two managers of grocery store chains (one live,
one by affidavit) expressing the opinion that consumers would be confused by Hansen’s use
of the term Brewhaus. Michael Gaetz, Senior Category Manager for Coborn’s, Inc., testified
by affidavit that he believed that consumers would be confused by Brew Time, but his
declaration does not indicate that he or any Coborn’s staff was actually confused. Accordingly,
the Gaetz affidavit is essentially a conclusory expert opinion about the likelihood of
confusion, not evidence of actual confusion. For the same reason, the court will accord little
weight to the hearing testimony of Alan Alden, vice president of Trig’s, who testified that he
believed that consumers would be confused by Hansen’s use of Brewhaus. Because the court
discounts the testimony of these two witnesses, the court regards this factor as neutral.
7. Defendant’s intent
Intent or bad faith is not a required element of a trademark infringement claim. Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 961 (7th Cir. 1992). But proof of

14

intentional copying, when shown, is a factor that strongly supports a finding of likelihood of
confusion. Henri’s Food Prods. Co., Inc. v. Kraft, Inc., 717 F.2d 352, 359 (7th Cir. 1983).
This is certainly not a prototypical counterfeiting case in which the defendant
resolutely copied plaintiff’s labelling to deceive grocery stores or grocery store consumers into
believing that it was selling genuine Bernatello’s Brew Pub Pizza. And the evidence adduced
so far would not establish such bad faith to support an award of enhanced damages under 15
U.S.C. § 1117(a). But the evidence does not place Hansen’s intent beyond reproach either.
The evidence shows that Hansen intended to capitalize on the success of a marketing
trend started by Bernatello’s—promoting premium frozen pizza by associating it with craft
brewing. But capitalizing on that trend is fair competition. Bernatello’s may have started the
trend, but now it is commonplace for providers of premium pizza to associate their products
with taverns, pubs, or craft brewing. Bernatello’s has not objected to Palermo’s use of P’Mos
Pub Pizza Co., so Bernatello’s cannot at this point object to anyone associating their frozen
pizza with pubs or taverns. But fair competition does not include intentionally capitalizing
on Bernatello’s brand identity by exploiting consumer confusion. The testimony at the
hearing was that Topco, not Hansen, wrote the copy for the Topco sell sheet. But that sell
sheet suggests that Hansen was attempting not only to compete in the premium frozen pizza
category, but also to emulate Bernatello’s brand identity by highlighting the term “Brew.”
The fact that Hansen proceeded to market under the Brewhaus and Brew Time marks even
after Bernatello’s objected rules out the possibility that this was a purely innocent error.
Nevertheless, the evidence falls short of establishing Hansen’s intent to create
confusion and exploit it. Because intent is not required to show a likelihood of confusion, this
factor is neutral.

15

8. Summary of factors
In sum, none of the likelihood of confusion factors counts in favor of Hansen; some
are neutral. Several important factors, particularly the similarity of the marks and the
products, and the overlapping territories of use and customer base, count heavily in favor of
Bernatello’s. On balance, the court concludes that Bernatello’s has made a strong showing of
likelihood of success on the merits. Hansen’s sincere effort to adopt a different trade dress
does not change the fact that Hansen selected word marks that pose a substantial likelihood
of consumer confusion.
B. Adequacy of legal remedies
Bernatello’s must also demonstrate that it has no adequate remedy at law. This is a
separate consideration from whether Bernatello’s would suffer irreparable harm, although the
considerations are related, and Bernatello’s presents essentially the same evidence for both.
Typically a legal remedy is inadequate for one of four reasons: (1) damages would
come too late to be of meaningful value to the plaintiff; (2) plaintiff might not be able to
afford the full litigation; (3) the defendant might not be collectible at the end of the
litigation; or (4) the monetary damages might be too difficult to calculate. Roland Mach. Co. v.
Dresser Indus., Inc., 749 F.2d 380, 386 (7th Cir. 1984). Bernatello’s has not made any
showing that it could not afford the litigation, or that Hansen would not be collectible, or
that the payment of damages would come too late to be meaningful to Bernatello’s.
This is the type of case in which damages would be difficult to calculate. At the end of
this trial, the trier of fact could determine the number of Brewhaus and Brew Time pizzas
that Hansen had sold and calculate some reasonable compensation for the infringing
products. But trademark infringement almost inevitably damages the goodwill and reputation

16

of the trademark owner and impairs the trademark owner’s prospects in ways that are not
readily calculable.
Bernatello’s adduced evidence of this point. For example, Brew Time pizza sold
through Topco is purported to have an everyday price of $6.99, which, if customers are
confused, could erode the everyday price that Bernatello’s could charge for its Brew Pub
Pizzas. Chad Schultz, Bernatello’s Vice President of Sales and Marketing, testified that if a
Brewhaus or Brew Time pizza was advertised as being on sale, a consumer who inadvertently
purchased a Brew Pub Pizza at full price might be irritated when he or she did not get the
discounted price that they expected. If consumers who intended to purchase a Brew Pub
Pizza inadvertently ended up with a Brewhaus or Brew Time pizza and did not like it, that
customer might forever be lost to Bernatello’s. And, again as Schultz testified, if Hansen were
to have a recall event for Brewhaus or Brew Time pizza, that would tarnish the Brew Pub
reputation if consumers were confused about the brands. These are all ways in which the
value of the Bernatello’s Brew Pub Pizza marks could erode, and these intangible damages
would be very difficult to prove and quantify at trial.
Accordingly, because the full extent of Bernatello’s damages would be difficult to
calculate, as is typical in trademark disputes where the plaintiff’s reputation is at risk, the
court concludes that Bernatello’s has demonstrated that it has no adequate remedy at law.
C. Irreparable harm
The third inquiry is whether Bernatello’s would suffer irreparable harm if the court
denied the preliminary injunction.
This raises a legal question that the parties have not resolved, namely, whether
injuries arising from Lanham Act violations are presumed irreparable. Bernatello’s cites

17

Seventh Circuit precedent to this effect. See, e.g., Helene Curtis Indus., Inc. v. Church & Dwight
Co., Inc., 560 F.2d 1325, 1332 (7th Cir. 1977). But the cases on which Bernatello’s relies
predate the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., which held that in
patent cases, irreparable harm is not presumed but must be proven. 547 U.S. 388, 391
(2006). The Court reasoned that the Patent Act provided no exception from the common
law, which required the traditional four-factor showing to secure injunctive relief.
The Lanham Act, like the Patent Act, does not expressly state that irreparable damage
is presumed. Indeed, the Lanham Act states that the prevailing party may receive injunctive
relief “according to the principles of equity.” 15 U.S.C. § 1116(a). The question of whether
the rationale of eBay applies to Lanham Act claims remains an open question in the Seventh
Circuit. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
§ 30:47.30 (4th ed. 2015). But as McCarthy observes, there might be good reasons why
irreparable injury should be presumed in trademark cases, though not in patent cases. A
trademark is essentially the embodiment of the owner’s reputation, and reputational and
unquantifiable market harms flow almost automatically from the likelihood of confusion and
the loss of control over one’s trademark, which are elements of a successful trademark claim.
Proving irreparable harm is doubly complicated in a case like this one, where the
plaintiff seeks an injunction almost as soon as the infringing product hits the market. In this
case, Brewhaus and Brew Time pizzas have been on the market only briefly in small amounts,
so Bernatello’s cannot yet point to any significant loss of market share, incidents of consumer
confusion or dissatisfaction, or price erosion.
But the court need not rely on a presumption. Bernatello’s has done what it can
reasonably be expected to do at this point. It has shown that there is a significant probability

18

that over the course of the next year, Hansen is poised to achieve significant success in the
marketplace, particularly through its distribution arrangement with Topco. Through Topco,
Hansen has the potential of reaching retailers with total sales of $120 billion. (Based on the
Topco promotional materials, Plaintiff’s Ex. 7.) The court finds it particularly significant that
the Topco sell sheet purports to sell the Brew Time pizza at $6.99, $4.00 cheaper than the
standard price for Brew Pub Pizza. And some of Topco’s members are grocery store chains to
which Bernatello’s sells directly. To be clear, Bernatello’s cannot complain about Hansen or
Topco offering a competing premium pizza at $6.99. But if Hansen attracts business to its
Brew Time pizza because consumers believe that it is a cheaper version of the Brew Pub
Pizza, Bernatello’s sales of its Brew Pub Pizza may be permanently lost to other competitors.
And after Hansen promotes a confusingly similar premium pizza at $6.99, Bernatello’s may
not be able to sell premium pizza at $10.99, even if Hansen is forced to change its brand
name when this case concludes a year from now.
Regardless of whether irreparable harm is presumed, the court finds that Bernatello’s
has shown that it will suffer such harm without a preliminary injunction.
D. Balance of harms
Because Bernatello’s has made its threshold showings, the court weighs the remaining
factors. Hansen concedes that it would be relatively easy to re-design and re-print its label.
According to Hansen’s witnesses, the name on the label could be changed in 20 minutes, and
new labels could be printed within a few weeks. Nevertheless, Hansen contends that it would
suffer permanent harm because grocery stores would require Hansen to establish a new SKU
number for the rebranded products, and this process would take a long time. Hansen
customers have begun to accept the Brewhaus and Brew Time products, and there is no

19

guaranty that they would accept the same products with a different name and a different
SKU number.
The court does not find this testimony persuasive. First, Fechter was unable to
quantify Hansen’s sales of Brewhaus pizza, and sales of Brew Time pizza are minimal. Thus,
Hansen has not shown that it has a large base of retailers committed to Brewhaus and Brew
Time. Second, Hansen did not support its assertion that retailers would be reluctant to
switch to a new name with testimony from any of its retailer customers. Thus, Fechter’s
testimony is mostly conclusory and speculative. Third, Hansen’s accused products are, at this
point, virtually brand new. The harm to Hansen from an injunction will only increase with
time.
The court finds that Hansen will face significantly less harm with the injunction than
Bernatello’s will suffer without it. Nevertheless, the injunction the court will issue will
provide for a transition period to alleviate the harm to Hansen that might result from an
abrupt transition to new brand names.
E. The public interest
Bernatello’s must also show that the issuance of the requested injunction is not
adverse to the public interest. Both sides invoke the usual general principles concerning the
public interest. Bernatello’s contends that avoiding consumer confusion is in the public
interest. Hansen counters that the public has an interest fostering competition. The court
concludes that neither side has adduced evidence that the public interest would be harmed or
advanced by an injunction against Hansen’s use of the terms Brewhaus or Brew Time in
connection with frozen pizzas. The public interest does not tip the analysis one way or the
other, but it imposes no impediment to the issuance the injunction requested by Bernatello’s.

20

CONCLUSION
Hansen asks the court to forbear issuing an injunction on a partial record, which is a
legitimate concern with any preliminary injunction. Perhaps the parties will adduce survey
evidence concerning the likelihood of confusion, or compelling evidence of actual confusion.
But at this point, Hansen has not pointed to any particular evidence that it contends will
vindicate it. The court must make the decision on the basis of the evidence at hand, which
the parties had an adequate opportunity to develop, and an ample opportunity to present.
The court concludes that Bernatello’s is entitled to a preliminary injunction against
Hansen’s use of any trademark that uses the term “brew,” or any variant of “brew.” But
Bernatello’s has not submitted a proposed form of injunction. Nor has it proposed any
security for the injunction, which would be required under Rule 65(c).
The court will not issue any injunction order in this case until Bernatello’s submits a
proposed injunction order and a proposal for adequate security. The parties must confer on
both these matters, and if possible, make a joint submission. If the parties are unable to reach
agreement, Bernatello’s may have until April 8, 2016, to submit its proposal. Hansen may
have until April 15, 2016, to submit any objections.

ORDER
IT IS ORDERED that:
1. Plaintiff Bernatello’s Pizza, Inc.’s motion for preliminary injunction, Dkt. 7, is
GRANTED.
2. The parties will submit proposed injunction orders and proposals for adequate
security—jointly, if possible—by April 8, 2016. If the parties are unable to submit
joint submissions, they will submit their separate proposals according to the
schedule articulated above.

21

3. The parties will file electronic copies of their hearing exhibits by April 1, 2016.
Entered March 25, 2016.
BY THE COURT:

s/ James D. Peterson
________________________________________
JAMES D. PETERSON
District Judge

22