La Terra Fina USA, LLC v. Resers Fine Foods, Inc.

3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA LA TERRA FINA USA, LLC, Case No. 3:23-cv-02631-JSC 7 Plaintiff, ORDER RE: MOTION TO DISMISS 8 v. SECOND AMENDED COMPLAINT RESER’S FINE FOODS, INC., Re: Dkt. No. 39 Defendant.

La Terra Fina USA, LLC, brings trade dress infringement and unfair competition claims against Reser’s Fine Foods, Inc. The parties are competitors who manufacture and sell specialty foods, including dips, spreads, and quiches, in the same retail channels. The Court previously granted Defendant’s motion to dismiss for failure to state a claim with leave to amend. Plaintiff thereafter filed the now operative Second Amended Complaint (SAC), which Defendant has again moved to dismiss on nearly identical grounds. (Dkt. Nos. 37, 39.1) Having considered the parties’ briefs and having had the benefit of oral argument on February 29, 2024, the Court GRANTS IN PART and DENIES IN PART Defendant’s motion to dismiss. Plaintiff has adequately pled claims for infringement of its artichoke and jalapeno dips, but otherwise fails to state a claim.

DISCUSSION2 A. Trade Dress Infringement, 28 U.S.C. § 1114 To prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party “must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant’s use of the mark is likely to cause consumer confusion.” Dep’t of Parks & Recreation Record citations are to material in the Electronic Case File (“ECF”); pinpoint citations are to the ECF-generated page numbers at the top of the documents.

1 v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006). Defendant insists Plaintiff has || failed to plead a likelihood of confusion in connection with Plaintiff's federally registered trade marks.

4 The Court previously granted Defendant’s motion to dismiss this claim because it was unclear what aspects of the mark Plaintiff claimed a protectible ownership over. (Dkt. No. 32 at 4- || 5.) Because Plaintiff relied on two different definitions of the mark—one in the factual allegation section (LTF Trade Dress) and another in the legal claims section (LTF Registered Trade Dress)— Plaintiff failed to provide Defendant with fair notice of its claims. (Ud. at 5 (citing See Bell Atl.

9 Corp. v. Twombly, 550 U.S. 544, 554 (2007)).)

10 The SAC defines “LTF Registered Trade Dress” as the trade dress it registered for the 11 “Artichoke and Jalapeno Dip 2-pack product packaging” (Registration No. 7072151) and the trade || dress for the “31 oz Artichoke and Jalapeno Dip” (Registration No. 7072149). (Dkt. No. 37 at □ 13 17.) These registrations are attached to the Second Amended Complaint. (Dkt. Nos. 37-4; 37-5.) v 14 || The descriptions of the two marks are virtually identical. The 7072151 mark is described as: 15 The color(s) white, purple, green and blue is/are claimed as a feature of the mark.

The mark consists of three-dimensional product packaging for the goods, with a 16 depictions of artichokes and jalapenos on the top and side, with the colors white, purple, green and blue. Also, on the top and side are the stylized words LA TERRA FINA. The a 17 broken lines depicting the product packaging indicate placement of the mark on the goods and are not a part of the mark.

Z 18 19 (Dkt. No. 37-4 at 2.) And the 7072149 mark is described as: 0 The color(s) white, purple, green and blue is/are claimed as a feature of the mark.

The mark consists of threejdimensional product packaging for the goods, with 21 depictions of artichokes and jalapenos, with the colors white, purple, green and blue on the top and side. Also, on the top and side are the words LA TERRA FINA. The broken 22 lines depicting the product packaging indicate placement of the mark on the goods and are not a part of the mark.

23 (Dkt. No. 37-5 at 2.)

24 Plaintiff alleges it “sells its Artichoke and Jalapeno dip using its LTF Registered Trade || Dress at Costco” and the artichoke dip Defendant sells at Costco is in product packaging || “confusingly similar to the LTF Registered Trade Dress.” (Dkt. No. 37 at 57,58.) In 27 particular, 28 Defendant’s 2-Pack Artichoke Dip Packaging is in a nearly identical product sleeve. Specifically, the sleeve is the same light background 1 (white), with its house brand (Stonemill Kitchens) in a dark color in cursive on the top and side of the package, uses the same color palette 2 including an exact green and similar purple color, and even the stylization of the artichoke and the placement of the artichokes on the 3 packaging is confusingly similar.

4 (Id. at 60.) Likewise, “Defendant’s 30 oz Artichoke Dip Packaging utilizes its house brand (Stonemill Kitchens) in a dark color in cursive on the top and side of the package, light || background (white) for its labels, the same color palette including an exact green and similar purple color, and even the stylization of the artichoke and the placement of the artichokes on the || packaging is confusingly similar.” (/d. at 61.) The Second Amended Complaint elsewhere || includes a side-by-side comparison of “Plaintiffs Artichoke and Jalapeno 31 oz Packaging and || Defendant’s 30 oz Artichoke Packaging”: 1 || Sees =O =.

RC ree ae <a Pease) eet 5 Tip Ti tt Fe eo Ate ft Fe a A LPs © Berna ao = iret te re —— □□ es ; aA eh Og i A UT he □□ ec eal = i 16 SE a =o = 17 (Dkt. No. 37 at { 41.) These allegations are sufficient to state a claim for trademark infringement || under Section 1114 as to (1) Plaintiff's Artichoke and Jalapeno Dip 2-pack product packaging || (Registration No. 7072151), and (2) Plaintiffs 31 oz Artichoke and Jalapeno Dip (Registration || No. 7072149).

21 To the extent Plaintiff attempts to plead a claim of trademark infringement under Section 22 1114 for its “dip products” generally, Plaintiff has not adequately alleged such a claim. There are 23 no factual allegations that plausibly support an inference some unidentified products of Defendant 24 are infringing some unidentified products of Plaintiff.

25 B. Trade Dress Infringement, 28 U.S.C. § 1125(a) 26 The elements of a claim for infringement of common law trademark rights “are virtually 27 the same as the elements of a claim for trademark infringement under § 1114, although a § 1114 || claim requires ownership of a registered trademark while a § 1125 claim does not.” Iglesia Ni Cristo v. Cayabyab, No. 18-CV-00561-BLF, 2020 WL 1531349, at *7 (N.D. Cal. Mar. 31, 2020); see also Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008) (noting these “infringement claims are subject to the same test.”).

4 The Court previously dismissed this claim because Plaintiff had not clearly identified the trade dress Defendant was alleged to have infringed. (Dkt. No. 32 at 5.) The SAC clarifies this || claim is based on infringement of its “LTF Trade Dress” and not the “LTF Registered Trade || Dress” as previously alleged. (Dkt. No. 37 at J] 73-93.) “LTF Trade Dress” is defined as “its || brand name in cursive on the top and side of a clear round package with a clear lid, product name || and description in all capital block letters on the top and side of the package, light background 10 (white) for its labels or product sleeve, with a vibrant color scheme, and depictions of the main 11 ingredients.” (Dkt. No. 37 at 7 14.) Plaintiff includes the following image as “an example:” “She < a ab.

13 “Al *skam 2 qs we af igtnee cutie : maeq \ a 16 Ud.) While Plaintiff alleges infringement as to all of its dips and not just the two products 17 identified in the complaint—it has not plausibly alleged infringement as to any other product. The 18 SAC neither alleges other products bearing its LTF Trade Dress nor alleges any products of 19 Defendants other than its artichoke dips. (Dkt. No. 37 at {| 37-40.) When asked at oral || argument, Plaintiff conceded the SAC did not identify or contain any images of Defendant’s other 21 products.

22 Accordingly, Defendant’s motion to dismiss is granted except as to the alleged 23 infringement of Plaintiffs artichoke and jalapeno dips by Defendant’s artichoke dip.

24 C. Unfair Competition Claims 25 Plaintiff pleads unfair competition claims under both the Lanham Act, 15 U.S.C. § 26 1125(a), and California Business and Professions Code § 17200. Claims for federal trademark 27 infringement under 15 U.S.C. § 1114 and federal unfair competition under 15 U.S.C. § 1125(a) are 28 subject to the same legal standards. See Mintz v. Subaru of Am., Inc., 716 Fed. Appx. 618, 622 (“the elements needed to establish federal unfair competition under 15 U.S.C. § 1125(a) are identical to the elements needed to establish trademark infringement under 15 U.S.C. § 1114”); see also Brookfield Commc’ns, Inc. v. West Coast Ent. Grp., 174 F.3d 1036, 1067 n.8 (9th Cir. 1999). Further, the Ninth “Circuit has consistently held that state common law claims of unfair competition and actions pursuant to California Business and Professions Code § 17200 are “substantially congruent” to claims made under the Lanham Act.” Cleary v. News Corp., 30 F.3d 7 1255, 1262–63 (9th Cir. 1994).

8 Plaintiff contends if either of its trade dress infringement claims survive dismissal, then the unfair competition claims based on those violations necessarily survive as well. (Dkt. No. 46 at 17.) While Plaintiff’s Unfair Competition claims only refer to infringement of its LTF Trade Dress, Plaintiff’s opposition brief suggests the claim is predicated on both infringement of its LTF Trade Dress and its LTF Registered Trade dress. (Compare Dkt. No. 37 at ¶¶ 94-115 with Dkt.

13 No. 46 at 17.) At oral argument, Plaintiff clarified its claim is only based on its unregistered claim of infringement under Section 1125(a). Because the Section 1125(a) claim may proceed as to infringement of Plaintiff’s artichoke and jalapeno products by Defendant’s artichoke product, the unfair competition claims predicated on this claim can proceed as well. The claim is dismissed as to any other products.

18 D. Injunctive Relief Claim 19 Plaintiff again pleads an independent injunctive relief claim. The Court previously dismissed this claim “without prejudice to renewal as a remedy to Plaintiff’s other claims.” (Dkt.

21 No. 32 at 6 (citing Albert v. Embassy of Music GMBH, No. 5:19-CV-06652-EJD, 2020 WL 22 4284830, at *4 (N.D. Cal. July 27, 2020) (“It is well-settled that an injunction is a remedy, not a separate claim or cause of action”) (cleaned up); Shamsian v. Atl. Richfield Co., 107 Cal. App. 4th 24 967, 985 (2003) (“a request for injunctive relief is not a cause of action”)).) In a footnote, Plaintiff concedes the claim should not have been included in the complaint. (Dkt. No. 46 at 18, n.3.)

26 Plaintiff’s injunctive relief claim is dismissed.

27 E. Leave to Amend “when justice so requires.” Fed. R. Civ. P. 15(a)(2); Eminence Capital, LLC v. Aspeon, Inc., 316 || F.3d 1048, 1051 (9th Cir. 2003). Defendant urges the Court to deny leave to amend because Plaintiff has already amended the complaint twice and failed to cure the deficiencies. Indeed, in || response to the prior motion to dismiss Plaintiff represented it could “provide the exact pantone colors” if granted leave to amend, but it did not do so. (Dkt. No. 24 at 8.) Likewise, Plaintiff || represented it could “specifically list the exact products at issue,” but it did not do so. (d. at 8.)

7 And at oral argument Plaintiff did not argue leave to amend should be granted.

8 Accordingly, the dismissal of Plaintiff's infringement claims based on its other dips and spreads is without leave to amend. Plaintiff has already amended twice and the Court concludes 10 further amendment would be futile. See Zucco Partners, LLC v. Digimarc Corp., 552 F.3d 981, 11 1007 (9th Cir. 2009) (“[W]here the Plaintiff has previously been granted leave to amend and has 12 subsequently failed to add the requisite particularity to its claims, [t]he district court’s discretion to 13 deny leave to amend 1s particularly broad.” (quotation omitted)).

CONCLUSION 15 For the reasons stated above, the Court GRANTS IN PART and DENIES IN PART a 16 || Defendant’s motion to dismiss. The motion is denied as to Plaintiff's claims based on 17 || infringement of its artichoke and jalapeno dips by Defendant’s artichoke dip, and the derivative 18 unfair competition claims, but the motion is otherwise granted without leave to amend.

19 The Court sets a case management conference for April 17, 2024 at 11:00 a.m. with a joint || case management conference statement due April 10, 2024.

21 This Order disposes of Docket No. 39.

22 IT IS SO ORDERED.

23 Dated: February 29, 2024 AQCQUELINE SCOTT CORLE 26 United States District Judge