Sonate Corporation d/b/a Vegedelphia Foods v. Beyond Meat is a tale of two trademarks separated by the same words.
Vegedelphia registered the trademark WHERE GREAT TASTE IS PLANT-BASED in 2015. Its business is selling meat-substitute products to restaurants and distributors. The mark was used on its wholesale packaging, website, and promotional merchandise. After a supply chain interruption, the company scaled its operations back and ceased advertising.
Beyond Meat (“Beyond”) is another, larger seller of meat-substitute products. In 2019, it partnered with Dunkin’ [Donuts] to offer a plant-based substitute for traditional breakfast sandwiches, using the trademark “Plant-Based. Great Taste.”
Two weeks before the debut of the advertising campaign for the joint venture, Beyond’s counsel investigated registration of the new tagline and discovered Vegedelphia’s registered trademark which arguably was confusingly similar with the proposed slogan. Beyond went ahead with the registration and the ad campaign anyway. Vegedelphia then learned of Beyond’s application and sent a demand letter alleging copyright infringement.
The USPTO refused to register Beyond’s trademark, and Beyond expressly abandoned the application and ceased use of the alternative slogan “Great Taste. Plant-Based.” However, during the time that Beyond and Dunkin’ were using the slogan, Vegedelphia tried and failed to enter into a joint venture and license its registered trademark, WHERE GREAT TASTE IS PLANT-BASED. The joint venture agreement was drafted but not signed. Vegedelphia sued in federal court for the District of Massachusetts, arguing that Beyond’s short-lived use of the confusingly similar taglines prevented the plaintiff from licensing its trademark.
The court considered cross-motions for summary judgment, applying the eight-factor analysis of the First Circuit to determine likelihood of confusion, including the strength of plaintiff’s mark; the degree of similarity between the products; and the proximity of the products. As for the factor that considers bad intent, Vegedelphia said that employee emails at Beyond demonstrated that Beyond knew about Vegedelphia’s mark before launching its campaign.
The analysis yielded mixed results with the court finding that the products were similar because each company sold meat substitutes; the duration of Vegedelphia’s mark did not necessarily equate to strength; and that actual confusion was nearly impossible because Vegedelphia sold to distributors and Beyond sold to consumers.
The court also heard from expert witnesses on the distinctiveness and genericness of trademarks, but doubted the usefulness of expert witnesses at the summary judgment stage. It also noted that the valuation offered by one of Vegedelphia’s witnesses lacked the firsthand knowledge that is required of an expert witness. (That, to me, suggests that if the plaintiff relies on that expert witness, there will be no damages for the plaintiff at the end of a trial.)
The court found that a jury might find actual damages arising from the two years of allegedly infringing on Vegedelphia’s registered trademark. It denied the summary judgment motions as to liability and, despite the resources spent trying to resolve the case by motion, the case will proceed to trial.
Only three of the eight Polaroid factors weighed in favor of Beyond, with their best argument being that there was no real world probability of confusion (wholesale plaintiff in contrast with retail defendant). But that apparently was enough for the court to find that there was a question of fact, and summary judgment was inappropriate.
One might think that knowing about Vegedelphia’s trademark registration was enough to rule against Beyond. Which just goes to show you: constructive knowledge alone is not enough to determine a fact-intensive case. Also, hypothetical damages based on unsigned agreements are exactly that: hypothetical. No less, and no more.
