Daily Archives: April 18, 2017

KERRYGOLD initiates trademark lawsuit against competing butter brand

Recently, the companies responsible for manufacturing and distributing butter under the trademark KERRYGOLD (“Plaintiffs”) filed a trademark infringement lawsuit against Eurogold USA, LLC and Old World Creamery, LLC (“Defendants”).[1] The dispute revolves around Plaintiffs’ allegations that the Defendants plan to sell Irish butter products under the mark IRISHGOLD.[2] According to  Plaintiffs, the parties were in negotiations for the Defendants to package Plaintiffs’ Irish butter products under the KERRYGOLD mark in Wisconsin, but negotiations broke off and Defendants decided to sell their own products under the IRISHGOLD mark.[3] Although Plaintiffs’ KERRYGOLD products are sold throughout the United States, such products have not been widely available in the state of Wisconsin due to the state’s specific requirement that any butter sold in the state bear a Wisconsin or federal grade mark.[4] The problem for Plaintiffs is that its KERRYGOLD products are inspected and graded in Ireland.[5] As a result, Plaintiffs had sought to enlist Defendants’ help in selling its KERRYGOLD products in Wisconsin.[6]

According to Plaintiffs, the Defendants’ IRISHGOLD mark would be presented to the marketplace with a similar font and color scheme found in Plaintiffs’ KERRYGOLD branded butter and would also be sold in packages containing two 4 oz. sticks, which is the same way that Plaintiffs sell their KERRYGOLD butter products.[7] Plaintiffs have alleged that they own several federal trademark registrations for the mark KERRYGOLD, using different fonts, logos and variations.[8] Plaintiffs have also alleged that Defendants’ proposed use of the IRISHGOLD mark would cause consumers to mistakenly believe that this product was authorized by Plaintiffs.[9] Plaintiffs pointed to a specific instance where on April 7, 2017, the Chicago Tribune allegedly published a news story discussing the imminent sale of butter under the IRISHGOLD mark but used a photograph of Plaintiffs’ KERRYGOLD butter.[10]

As a result, simultaneously with the filing of the Complaint, Plaintiffs filed motions for a temporary restraining order and for a preliminary injunction.[11] On or about April 13, 2017, the Eastern District of Wisconsin granted the Plaintiffs’ Motion for Temporary Restraining Order which temporarily prevents the Defendants from using their IRISHGOLD mark.[12] This Order is only temporary in nature, and thus, the Court ordered that an additional court hearing will be held on Plaintiffs’ Motion for Preliminary Injunction.[13] One of the issues yet to be determined is whether Plaintiffs’ KERRYGOLD mark is considered a famous mark, and thus, can support a claim for trademark dilution.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 4 (E.D. Wis. April 10, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 24 (E.D. Wis. April 10, 2017).
[13] Id.