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Keywords

plaintiffdefendantlitigationinjunctionmotiontrademarkcorporation
plaintiffdefendantlitigationinjunctionmotiontrademarkcorporation

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Bertolli USA, Inc. v. Filippo Bertolli Fine Foods, Ltd., 662 F.Supp. 203, 6 U.S.P.Q.2d 1043

Facts

Manufacturers of olive oil sold under the trademark 'Bertolli' sought to prevent Filippo Bertolli and his corporation from using the name 'Bertolli' in their business. The plaintiffs alleged trademark infringement and false designation of origin under the Lanham Act, as well as state law claims. Filippo Bertolli, the great-great-grandson of the founder of the Bertolli food business, had incorporated his company and printed labels for his products, but had not yet sold them to the public. The plaintiffs moved for a preliminary injunction to stop the use of the trademark.

Issue

Whether the plaintiffs are entitled to a preliminary injunction against the defendants for trademark infringement and false designation of origin.

Whether the plaintiffs are entitled to a preliminary injunction against the defendants for trademark infringement and false designation of origin.

Rule

To obtain a preliminary injunction, a plaintiff must show irreparable harm and either a probability of success on the merits or serious questions going to the merits that make them fair grounds for litigation, with a balance of hardships favoring the moving party. The Lanham Act defines trademark infringement as the unauthorized use of a registered mark in commerce that is likely to cause confusion among consumers.

In order to obtain a preliminary injunction, a plaintiff must demonstrate irreparable harm and either probability of success on the merits or sufficiently serious questions going to the merits to make them fair grounds for litigation and a balance of hardships tipping decidedly in the moving party's favor.

Analysis

The court found that the plaintiffs demonstrated a likelihood of success on the merits due to the close similarity between the 'Bertolli' trademark and the name 'Filippo Bertolli Fine Foods.' The strength of the Bertolli mark, the volume of its sales, and the lack of sophistication among consumers of inexpensive olive oil indicated that consumers would likely be confused about the source of the goods. The defendants' actions, including sending a bottle to a distributor and printing labels, met the 'use in commerce' requirement for trademark infringement.

Conclusion

The court granted the preliminary injunction, preventing the defendants from using the name 'Bertolli' in their business.

The motion for an order preliminarily enjoining defendants from using the name Bertolli as part of their corporate name is granted.

Who won?

The plaintiffs, manufacturers of olive oil under the 'Bertolli' trademark, prevailed in their motion for a preliminary injunction. The court determined that the plaintiffs had established a likelihood of success on the merits due to the potential for consumer confusion regarding the source of the olive oil. The strength of the Bertolli mark and the lack of sophistication among consumers were significant factors in the court's decision.

The plaintiffs, manufacturers of olive oil sold under the trademark 'Bertolli,' were entitled to a preliminary injunction preventing corporation and its principal from using the same name as trademark or service mark in manufacture, import, distribution or sale of olive oil.

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