United States District Court, W.D. Wisconsin
OPINION & ORDER
D. PETERSON District Judge
a trademark case. Plaintiff Foremost Farms USA, Cooperative,
sells a food ingredient, dried whey powder, under the mark
NUTRITEK, which has been federally registered since in 1963.
Defendant Diamond V Mills, Inc., sells animal feed
supplements using the same mark, NUTRITEK, for which it
acquired federal registration in 2015. Foremost contends that
Diamond V's infringes its federal and common law
trademark rights, and it seeks cancellation of Diamond
V's NUTRITEK registration.
V moves to dismiss Foremost's complaint for failure to
state a claim under Federal Rule of Civil Procedure 12(b)(6).
Dkt. 20. Diamond V argues that its NUTRITEK mark cannot
infringe on Foremost's NUTRITEK mark because Diamond
V's mark is registered and used for animal feed whereas
Foremost's mark is registered and used solely for human
consumption. The critical question is not whether the
parties' products are identical or directly competitive,
but whether potential customers might reasonably believe that
the products come from the same source. This is a fact issue
ill-suited for resolution at the pleading stage, despite
Diamond V's insistence that this is an extraordinary case
in which a likelihood of confusion is impossible. The court
will deny Diamond V's motion.
evaluating a motion to dismiss for failure to state a claim
under Rule 12(b)(6), the “court must accept the
complaint's well-pleaded factual allegations as true and
draw reasonable inferences from those allegations in the
plaintiff's favor.” Transit Express, Inc. v.
Ettinger, 246 F.3d 1018, 1023 (7th Cir. 2001). The court
takes the following facts from Foremost's amended
complaint. Dkt. 16.
(through its predecessors, which are immaterial to this
motion) has used the mark NUTRITEK in connection with dried
whey powder since 1961. The mark was federally registered in
1963 for use with “partially demineralized dried whey
for human consumption, in [old U.S.] class 46.” U.S.
Registration No. 747, 696. Although its federal registration
is for dried whey for human consumption, Foremost's
complaint alleges that its dried whey is suitable for and
used as an ingredient in products for both human and animal
consumption. See, e.g., Dkt. 16, ¶¶ 47,
53. Foremost also alleges that it has sold dried whey under
the NUTRITEK mark to “manufacturers, customers and
ultimately consumers of animal feed products since at least
1995.” Id. at ¶ 55.
V began using the mark NUTRITEK in 2014 or 2015 in connection
with animal feed supplements. The mark was federally
registered in 2015 for use with “animal feed
supplements, in [current international] class 5.” U.S.
Registration No. 4, 728, 885. Diamond V's supplements
consist of “functional metabolites and fermentation
compounds, ” which are added to other ingredients to
make animal feed.
registered, the marks are identical. But there are subtle
typographic differences in the marks as actually used. Both
are printed in sans serif fonts and placed on bulk bags. An
example of Foremost's packaging is on the left, and an
example of Diamond V's is on the right:
¶¶ 41, 68. Foremost alleges that the parties use
their marks “in overlapping channels of trade”
and that they market to “overlapping manufacturers,
customers and consumers.” Id., ¶ 72.
court has subject matter jurisdiction under 28 U.S.C.
§§ 1331 and 1367 because Foremost asserts claims
under federal law, and its state-law claims are part of the
same case or controversy.
gist of Diamond V's motion is that Foremost uses its mark
for human consumable products, a market separate and
unrelated to the market for animal consumable products where
Diamond V uses its mark. Thus, although the parties'
marks as registered are identical, Foremost cannot plausibly
allege a likelihood of confusion. Diamond V might ultimately
prevail on some version of this theory, because even
identical marks can be used on distinct products (think
DELTA, used at the same time for an airline, plumbing
fixtures, and power tools.) But this is not a matter that can
be resolved on a motion to dismiss, because Foremost has
adequately alleged that the parties use their marks in
overlapping markets, which makes a likelihood of confusion
plausible. The court will decline to consider the materials
outside the pleadings that Diamond V adduces in an attempt to
show that Foremost's market is really limited to human
products, specifically an ingredient for infant
evaluating a motion to dismiss under Rule 12(b)(6), the
question is “simply whether the complaint includes
factual allegations that state a plausible claim for
relief.” BBL, Inc. v. City of Angola, 809 F.3d
317, 325 (7th Cir. 2015); accord Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009). The plausibility requirement calls
for “enough details about the subject-matter of the
case to present a story that holds together.”
Runnion ex rel. Runnion v. Girl Scouts of Greater Chi.
& Nw. Ind., 786 F.3d 510, 526 (7th Cir. 2015)
(citation and quotation marks omitted).
asserts seven causes of action:
Count I: trademark infringement under the Lanham Act;
Count II: trademark infringement under common law;
Count III: false designation of origin under the ...