Category Archives 5th Circuit

Texas has settled a trademark dispute with Alamo Beer Co. and Old 300 Brewing after the state intervened in Alamo Beer’s lawsuit alleging Old 300 infringed its trademarked Alamo silhouette. Alamo Beer Co. v. Old 300 Brewing, LLC, No. 14-285 (W.D. Tex., consent order entered April 28, 2015). According to court documents, the settlement establishes that Texas owns the premises of the Alamo in downtown San Antonio and “[a]s the owner, the State also owns the image of the Alamo and the right to commercialize that image to whatever extent the State, as owner, decides to do so. Such commercialization includes the right to use or license the use of the image on product labels.” The consent order further lists the state’s federally registered trademarks related to the Alamo, which it uses to sell products at the landmark’s gift shop. Under the final judgment, Alamo Beer and Old 300 are permanently…

A consumer has filed a putative class action in Louisiana federal court against several California wineries alleging that their products contain “dangerously high” levels of arsenic, echoing a similar lawsuit filed in California in March 2015. Crespo-Bithorn v. The Wine Grp. Inc., No. 15-1424 (M.D. La., filed April 20, 2015). The complaint alleges that the wineries “sell and distribute wine to consumers at inorganic arsenic levels significantly higher than what the State of California considers the maximum acceptable limit for safe daily exposure” and asserts that the advertising and marketing of each wine was deceptive because it failed to warn of the arsenic levels. The plaintiff seeks national and state class certification and damages for the Louisiana cause of action of redhibition as well as alleged violations of Louisiana consumer protection statutes and the Magnuson-Moss Warranty Act. Details about the March lawsuit appear in Issue 559 of this Update.  …

Whole Foods Market Inc. is the target of two new putative nationwide class actions, one filed in a Texas federal court regarding the amount of sugar in the company’s plain Greek yogurt and the other filed in a California state court over alleged false advertising and sales of Blue Diamond almond milk products with a “Non-GMO Project Verified” label. Kubick v. Whole Foods Mkt., Inc., No. 14-1013 (W.D. Tex., filed November 10, 2014); Richard v. Whole Foods Mkt. Cal., Inc., No. BC563304 (Cal. Super. Ct., Los Angeles Cty., filed November 7, 2014). The Texas complaint alleges that Whole Foods 365 Everyday Plain Greek Yogurt represents that it contains 2 grams of sugar per serving, when testing shows that it actually contains more than 11 grams of sugar per serving, or “more than five and a half times the labeled amount.” According to the plaintiff, a California resident, this is particularly significant because…

A Texas federal court has rejected the argument that the founders of Gina’s Italian Kitchen infringed New York Pizzeria, Inc.’s (NYPI’s) trademark flavor in its Italian dishes. New York Pizzeria, Inc. v. Syal, No. 13-335 (U.S. Dist. Ct., S.D. Tex., order entered October 20, 2014). NYPI alleged that its former vice president and his business partner stole trade secrets, including recipes, and used them to infringe NYPI’s distinctive flavors and plating methods at their new restaurant, Gina’s Italian Kitchen. They allegedly obtained a franchisee’s username and password and used it to log onto NYPI’s franchisee website, which held, among other things, recipes for NYPI’s menu items. The court refused to dismiss the claims for violations of the Computer Fraud and Abuse Act and the Stored Communications Act stemming from alleged access to the franchisee website. The court then addressed NYPI’s Lanham Act claims. Asserting that “no special legal rule” prevents the…

Adopting a magistrate judge’s recommendation, a Texas federal court has ruled that Texas can intervene in a lawsuit brought by brewer Alamo Beer Co. alleging that Old 300 Brewing infringed Alamo Beer’s trademark for using the silhouette of the Alamo building on its labels. Alamo Beer Co. LLC v. Old 300 Brewing LLC, No. 14-285 (W.D. Tex., order entered October 14, 2014). The state of Texas filed a motion to intervene in April 2014, asserting that its interests in the Alamo trademark were not adequately represented by either party. A magistrate judge issued a report on the matter in May recommending that Texas be allowed to join the lawsuit, and Alamo Beer argued to the court that the magistrate judge had failed to properly analyze two factors of mandatory intervention and that the state lacked the right to intervene under trademark law. Reviewing Alamo Beer’s concerns, the court rejected its arguments and…

A jury in an Iowa federal court has reportedly determined that International Flavors and Fragrances Inc. (IFF) was not liable for the lung condition a man allegedly developed from microwaving popcorn containing diacetyl, a butter flavoring ingredient used in the product. Stults v. Int’l Flavors & Fragrances Inc., No. 11-4077 (U.S. Dist. Ct., N.D. Iowa, verdict entered August 19, 2014). The plaintiff claimed that the company had breached the implied warranty of fitness for its butter flavoring, which had a foreseeable use in microwave popcorn packages. IFF was the only remaining defendant during the seven-day trial out of some half-dozen companies originally sued for $27 million in compensatory damages. See Law360, August 20, 2014.   Issue 535

Texas has filed a motion to intervene in Alamo Beer Co. LLC’s trademark infringement suit against Old 300 Brewing LLC, asserting that the state has the rights to the “Alamo” mark. Alamo Beer Co. LLC v. Old 300 Brewing LLC, No. 14-285 (W.D. Tex., motion filed April 28, 2014). Filed in March 2014, Alamo Beer’s original complaint alleged that Old 300 Brewing (doing business as Texian Brewing Co.) infringed on its mark by using the silhouette of the Alamo on Texian beer labels, which image Alamo Beer has used and federally registered as a trademark for beer labeling since 1997. Texas argues that it has registered and common law rights to the use of the Alamo Mission’s likeness in commerce. In 2013, the state began registering the Alamo silhouette in a variety of categories, including blankets, apparel, jewelry, leather goods, digital media, packaged foods, and museum services. In the category…

A Texas Court of Appeals has affirmed a lower court’s grant of the defendants’ summary judgment motion in a legal malpractice action brought by a mushroom distributor, finding that he failed to prove lost profits as to his negligence claim and filed his breach of fiduciary duty claim too late under the applicable statute of limitations. Thomas v. Carnahan Thomas, LLP, No. 05-11-01615-CV (Tex. Ct. App., 5th Dist., decided February 5, 2014). The defendants represented mushroom distributor Stuart Thomas and provided legal advice as to one of the ongoing disputes he had with the company that produced the mushrooms he distributed. Among other matters, the attorneys told Thomas he could violate non-compete agreements in his distribution and employment contracts and also unsuccessfully represented him in handling his declaratory judgment action as to the non-compete agreements. The court agreed with the attorneys that Thomas had no evidence of lost profits because…

Texas and California residents have filed a putative class action against Whole Foods Market Services, Inc. in a Texas federal court, alleging that the company’s private label lines include falsely labeled additive-laden and genetically modified (GM) foods, despite promises that its products contain “nothing artificial” and that it enforces “strict quality standards.” Gedalia v. Whole Foods Mkt. Servs., Inc., No. 13-3517 (S.D. Tex., filed November 28, 2013). Among purported transgressions are (i) organic infant formula containing 25 ingredients “prohibited from being in organic foods” as well as 30 artificial ingredients, and (ii) organic soy and almond milk containing “ingredients not permitted in organic foods.” The complaint also alleges that the company reneges on its promise to avoid ingredients grown from genetically engineered seed and relies on a Cornucopia Institute study purportedly showing that Whole Foods’ 365 Everyday Value® products “were contaminated with high levels of genetically engineered ingredients,” citing, in particular,…

According to news sources, a federal jury in Texas has determined that Ralcorp Holdings, which makes bowl-shaped tortilla chips sold as store brands, did not violate trademarks or infringe patents on an allegedly similar product made by Frito-Lay and sold as TOSTITOS SCOOPS!®. Frito-Lay N. Am., Inc. v. Medallion Foods, Inc., No. 12-00074 (E.D. Tex.,  decided March 1, 2013). Additional information about the lawsuit can be found in Issue 427 of this Update. Frito-Lay had sought an order requiring that the defendant cease making BOWLZ® and CUPZ® chips and $4.5 million in damages. See Businessweek, March 4, 2013; The Kansas City Star, March 5, 2013.

Close