United States District Court, W.D. Wisconsin
OPINION & ORDER
D. PETERSON, DISTRICT JUDGE
a dispute over the trademark NUTRITEK, to which both parties
claim rights. Plaintiff Foremost Farms USA, Cooperative, uses
NUTRITEK for demineralized whey powder, a by-product of
cheese-making used primarily as an ingredient in processed
foods, but sometimes as an ingredient in animal feed.
Defendant Diamond V Mills, Inc., uses NUTRITEK for fermented
yeast powder, used as a supplement in dairy cattle feed. Both
parties have federal registrations for their marks, but
Foremost alleges that it is the senior user and that Diamond
V infringes its trademark rights.
V moves for summary judgment, asking the court to decide as a
matter of law that there is no likelihood of confusion.
Diamond V's central premise is that the parties'
branded products are sold in distinct markets. According to
Diamond V, Foremost sells NUTRITEK-brand whey powder only for
human consumption. It sells lesser-quality whey powder for
use in animal feed, but only as an unbranded commodity. There
is no likelihood of confusion, the argument goes, because the
Foremost does not use its NUTRITEK mark in the animal feed
market, and Diamond V does not sell NUTRITEK products as an
ingredient for human foods.
court will deny Diamond V's motion. There is no dispute
that Foremost sells demineralized whey powder as an
ingredient for animal feed. But how it brands the product
when it is sold for animal feed is genuinely disputed.
Foremost adduces evidence that the product destined for
animal feed is sometimes delivered in bags bearing the
NUTRITEK mark, that its sales force and customers refer to
the product as “NUTRITEK, ” and that its invoices
use the term “NUTRITEK.” This evidence does not
compel a jury to find that Foremost uses NUTRITEK as a
trademark in the animal feed market, but it is enough to
raise a genuine dispute of fact that requires trial.
court will grant Diamond V's motion for summary judgment
on Foremost's separate claim for unjust enrichment, but
otherwise Diamond V's motion is denied.
court begins with two preliminary matters. First, Foremost
moves to strike parts of Diamond V's motion for summary
judgment for failure to comply with this court's
procedures. Dkt. 87. Some of Diamond V's proposed
findings of fact cite documents that have not been filed,
cite wrong documents, and lack evidentiary support. But
Foremost essentially asks for a sanction, and any sanction
imposed by a court must be proportionate to the underlying
violation. See Salgado by Salgado v. Gen. Motors
Corp., 150 F.3d 735, 740 (7th Cir. 1998). The court will
disregard proposed facts that significantly fail to comply
with the court's procedures, but it will not strike any
part of the motion.
Diamond V asks for leave to file corrected proposed findings
of facts. Dkt. 99. The court will not force Foremost to
expend unnecessary costs by requiring it to respond to the
corrected proposed findings of fact. The court will deny
Diamond V's motion for leave to file corrected proposed
findings of facts.
main issue at this point turns on Foremost's evidence of
how it uses the NUTRITEK mark, an issue not substantially
affected by the deficiencies in Diamond V's proposed
findings of fact. So it is fair to both sides to decide
Diamond V's summary judgment motion on the merits.
following background facts are undisputed unless otherwise
noted. Additional facts are discussed where pertinent in the
is a dairy cooperative based in Baraboo, Wisconsin. Foremost
processes milk produced by its member farms to make dairy
products, including fluid milk, butter, and cheese.
also processes whey, a fluid by-product of cheese-making,
into ingredients for processed foods. Besides water, whey
comprises protein, lactose, and a variety of minerals. These
components, especially the protein and the lactose, are
useful as food ingredients. For many food applications, some
minerals are removed to improve the taste, texture, and
nutritional value of the final food product.
in 1961, Foremost (through a predecessor) began selling
partially demineralized whey powder as a food ingredient
under the NUTRITEK mark. In 1963, the United States Patent
& Trademark Office (USPTO) registered Foremost's
NUTRITEK mark for use with “partially demineralized
dried whey for human consumption, ” in old U.S. class
46. See U.S. Registration No. 747, 696.
sells most of its demineralized whey powder as an ingredient
for human food. It sells several varieties of NUTRITEK, which
have been demineralized to different extents. For example,
NUTRITEK 250 has 25% of the minerals removed; it is used in
food products such as salad dressing. NUTRITEK 900 has 90% of
the minerals removed; it is used as an ingredient in infant
reasons not fully explained in the record, sometimes the
demineralized whey powder does not meet the standards for
human consumption. Foremost sells that
“downgrade” demineralized whey through a
distributor as an ingredient for animal feed. The downgrade
product is sold at a significantly lower price than
Foremost's human food products. Although only a small
proportion of Foremost's demineralized whey powder is
sold as an animal feed ingredient, the amount is nevertheless
significant. Since 1998, Foremost has sold more than 12
million pounds of demineralized whey powder in the animal
feed market, representing more than $3.2 million in sales.
Dkt. 119, ¶ 29.
parties dispute whether Foremost actually uses the NUTRITEK
mark in the animal feed market. Diamond V contends that the
demineralized whey powder sold as an animal feed ingredient
is essentially scrap, sold as an unbranded commodity. But
Foremost adduces evidence that it sometimes delivers its
animal feed product in bulk bags bearing the NUTRITEK mark.
Foremost sometimes delivers the product in 2, 000-pound totes
that do not bear the NUTRITEK mark. Dkt. 125, ¶ 66.
sells demineralized whey powder for animal feed market
through an exclusive distributor, Diversified Ingredients,
Inc. Foremost adduces a declaration from Matthew Collins, a
trader from Diversified, who states that he and his customers
refer to Foremost's demineralized whey powder by a
variety of terms, but that they all understand that they are
referring to Foremost's NUTRITEK product. Dkt. 81,
¶¶ 6-7, 10-11. Collins has attached to his
declaration invoices that show sales of demineralized whey
powder. Some invoices refer to the whey powder as NUTRITEK,
and others refer to it by other names. Dkt. 81-1.
Diamond V's NUTRITEK
V, based in Cedar Rapids, Iowa, makes animal feed supplements
using microbial fermentation. Diamond V's product at
issue here is fermented yeast powder that reduces
inflammation in the digestive tracts of lactating cows.
Diamond V sells this product under the NUTRITEK mark to
animal feed ingredient manufacturers, to animal feed
ingredient distributors, to animal feed manufacturers, and to
February 19, 2014, Diamond V applied to register its NUTRITEK
mark on an intent-to-use basis. Diamond V contends that the
first sale of its NUTRITEK product was in 2014 through a
licensee, Dkt. 54, at 5 and Dkt. 85-35, at 2-3, even though
Diamond V's filings with the USPTO indicate that the
mark's first use in commerce was on February 11, 2015,
Dkt. 85-47, at 4. The USPTO registered Diamond V's
NUTRITEK mark on April 28, 2015, for “animal feed
supplements” in Class 5. See U.S. Registration No. 4,
court has subject matter jurisdiction under 28 U.S.C. §
1331 because Foremost asserts claims under the Lanham Act, 15
U.S.C. §§ 1114, 1125. The court has supplemental