IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Louis E. Kemp
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`Opposition No.
`
`Opposer,
`
`Serial No. 76/454,609
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`v_
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`Published: August 3, 2004
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`B
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`
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`
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`Bumble Bee Seafoods, Inc.
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`TM Page: 36
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`Applicant
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`
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`NOTICE OF OPPOSITION
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`llllllllllllllllllllllllllllllllllllllllllllllllll
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`09-03300‘
`u.s-v=wn=W°*=”M ~'=*”*°°‘°”“
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`MAIL STOP TTAB FEE
`
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3 513
`
`Opposer Louis E. Kemp, believes that he will be damaged by the registration of
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`LOUIS KEMP in application Serial No. 76/454,609, in International Classes 029 and 030, and
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`opposes the same under the provision of 15 U.S.C. 1063.
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`As grounds of opposition, Opposer alleges:
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`1.
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`Opposer, Louis E. Kemp,
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`is an individual, with his principal place of
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`residence at 9440 Cresta Drive, Los Angeles, California 90035.
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`2.
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`The Kemp family has been engaged in the wholesale and retail sale offish and
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`seafood since 1930.
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`In 1985, Opposer started Kemp Foods, Inc., a company that made and sold
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`artificial seafood products made from surimi, which is commonly defined as a minced, processed
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`fish product made from inexpensive Whitefish often processed to resemble more expensive seafood
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`such as crabmeat.
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`O9I07l2004 KSIIIIINI 00000114 76454509
`500.00 ll’
`61 R1540?
`_
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`

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`3.
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`On March 30, 1987, Opposer sold his surimi business to Oscar Mayer Foods
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`Corporation (“Oscar Mayer”) pursuant to a Stock Acquisition Agreement (“the Agreement”).
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`Opposer continued to operate numerous other businesses involving fish and seafood under various
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`names and marks including names and marks containing the name KEMP.
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`4.
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`As part of the Agreement, Opposer transferred all of the trademarks used in
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`connection with the surimi business, including KEMP, KEMP’s, KEMP’s & Design, to Oscar
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`Mayer. The Agreement also defined Opposer's right to use marks containing his family name in the
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`future. These restrictions, embodied in sections 7.5, 7.6 and 7.7 of the Agreement, provide:
`
`7.5
`
`Seller represents and warrants that Seller or any entity in
`which Seller has an interest (except for Company) has never
`engaged and is not presently engaged in marketing, selling, or
`otherwise distributing at retail any product bearing the name
`KEMP, KEMP’ S, KEMP’S & Design or any variation thereof
`except as disclosed and described in Exhibit 35 attached
`hereto. Seller agrees that neither Seller, nor any entity in
`which Seller has an interest, shall in the future market, sell or
`otherwise distribute any product except as provided in Section
`7.6 and 7.7 or any other food or any other food or beverage
`product either at wholesale or retail bearing the name KEMP,
`KEMP’S, KEMP’S & Design or any variation thereof.
`
`7.6
`
`Seller agrees that within nine months, Seller or any entity in
`which Seller has an interest, shall cease all use of the name
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`KEMP, KEMP’S and KEMP’S & Design in connection with
`the marketing, selling or otherwise distributing of any
`products.
`
`7.7
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`It is agreed that Seller or any entity in which Seller has an
`interest, may market, sell or otherwise distribute those
`products identified on Exhibit 36 attached hereto, bearing a
`composite trademark consisting of the word KEMP or
`KEMP’S and preceded by one or more additional words the
`selection of which shall be approved in advance in writing by
`Buyer. The terms of said Exhibit 36 may not be changed or
`modified except with the approval by Buyer, such approval
`not to be unreasonably withheld, and by an instrument in
`writing duly signed on behalf of Buyer and Seller.
`It is the
`
`intention of the parties to avoid any likelihood of confusion
`among consumer resulting from the use of the respective
`marks of Seller and Buyer.
`It
`is further agreed that the
`companies described in Exhibit 37 as indicated in Exhibit 37
`
`

`
`
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`4’:
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`attached hereto for all purposes except in connection with
`marketing, selling or distribution of products.
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`5.
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`Approximately six months after the parties finalized the Agreement, Lee
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`Scheele, Oscar Mayer Vice-President, asked Opposer if Oscar Mayer could use Opposer's personal
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`name, "Louis Kemp", to market its surimi based seafood products. This was the first time either
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`party had discussed using "Louis Kemp" in connection with the sale ofsurimi based products. Oscar
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`Mayer desired to use Opposer’s personal name because the company had achieved significant
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`success in the past by using the first and last names of individuals as trademarks, such as "Oscar
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`Mayer" and "Louis Rich" for certain of its processed food products. Opposer granted Mr. Scheele’s
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`request to use his name on surimi based seafood products as a favor and for no additional
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`consideration.
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`6.
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`Thereafter, the parties entered negotiations to amend the 1987 Agreement and
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`put in writing the oral agreement regarding the use of "Louis Kemp". During negotiations. Oscar
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`Mayer initially requested the right to use “Louis Kemp" on all products. This request was rejected
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`by Opposer, who stated that he had only given Oscar Mayer the limited right to use “Louis Kemp"
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`on surimi based products.
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`7.
`
`Counsel for Oscar Mayer also attempted to get Opposer to agree to aprovision
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`which would have contractually precluded Opposer from using "Louis Kemp" to sell food products
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`of any type. Opposer refused to agree to this unlimited blanket preclusion.
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`8.
`
`On June 23, 1989, the parties entered into Amendment No.
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`l
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`to the 1987
`
`Agreement (“the Amendment”). Section 7.8 of that Amendment provides, in its entirety:
`
`Seller grants to Buyer (a) the right to use and register the mark
`LOUIS KEMP, any design marks incorporating LOUIS KEMP and/or
`LOUIS KEMP SEAFOOD COMPANY in the United States and
`
`elsewhere for surimi based seafood products and such other
`seafood and fish accessory products within the natural zone of
`product line expansion; and (b) the right to adopt, use and register
`the name LOUIS KEMP SEAFOOD COMPANY in the United States
`
`and elsewhere as trade name or as the corporate, firm or business title
`of any business, operating division or subsidiary of Buyer for the sale
`of surimi based seafood products and such other seafood and fish
`accessory products within the natural zone ofproduct line expansion.
`Seller hereby agrees to reasonably cooperate with Buyer in obtaining
`trademark registrations, corporate, firm or business title recordals
`and/or trade name recordals that
`involve or include the name
`
`

`
`
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`described in this section 7.8 and shall execute, at not expense to
`Seller, all consents and documents reasonably necessary for said
`registrations and recordals. Seller further agrees that it shall not
`attack or assist another in attacking the validity of the trademark
`LOUIS KEMP or any design marks incorporating LOUIS KEMP or
`any registration thereof permitting hereunder or the trade name
`LOUIS KEMP SEAFOOD COMPANY or any recordals thereof
`owned by Buyer in the United States or elsewhere.
`(Emphasis
`added.)
`
`9.
`
`The language of the Amendment in general, and specifically the emphasized
`
`portion, was drafted by Oscar Mayer's attorneys.
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`10.
`
`The language of the Amendment was specifically requested by Oscar Mayer
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`to cover packaging concerns in which Oscar Mayer had wanted to sell cocktail and tartar sauces with
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`surimi based seafood in the same package. Therefore, “such other seafood and fish accessory
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`products within the natural zone of product line expansion” was intended to permit accessory
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`products such as cocktail and tartar sauces that could be included as an accessory to “surimi based
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`seafood products" and sold in the same package.
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`1 1 .
`
`Opposer signed the Amendment as a consent to the use ofhis name for surimi
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`based seafood products and "such other seafood and fish accessory products within the natural zone
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`of product line expansion." Opposer has never signed a consent or agreed to the use or registration
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`by Bumble Bee or its predecessors of the LOUIS KEMP marks for any products beyond those
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`specifically listed in the Amendment.
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`l2.
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`On August 25, 1992, Oscar Mayer, through its parent corporation Kraft
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`General Foods ("Kraft“), sold its surimi seafood business to Tyson Foods, Inc., (“Tyson”).
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`13.
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`Kraft assigned its rights, privileges and obligations of the LOUIS KEMP
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`marks in its sale of the surimi seafood business to Tyson.
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`14.
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`During the sales negotiations between Kraft and Tyson, Opposer called John
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`Tyson, president of Tyson, to inform him that Kraft did not have the right to transfer the LOUIS
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`KEMP marks because the Agreement contained a right of first refusal clause and a non—assignment
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`clause. Opposer also informed Mr. Tyson that there were usage restrictions on the LOUIS KEMP
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`trademarks limiting use of the mark to "surimi based seafood products and such other seafood and
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`fish accessory products within the natural zone of product line expansion", i.e. surimi alone or in the
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`same package as cocktail and tartar sauces.
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`

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`
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`15.
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`Tyson continued with the purchase fully aware of the trademark issues
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`involved with the LOUIS KEMP marks.
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`16.
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`Tyson has since sold its rights to the LOUIS KEMP marks to Applicant
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`Bumble Bee.
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`17.
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`Bumble Bee has engaged in litigation in an attempt to block Opposer from
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`using his name in connection with products outside the scope of consent granted in the Amendment.
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`The Memorandum Opinion and Order in Civil No. 96-173 (District of Minnesota) dated March 31,
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`2001 is attached as Exhibit A, the Findings of Fact, Conclusions of Law and Order for Judgment in
`
`Civil No. 5-96-173 (District of Minnesota) dated September 30, 2002 is attached as Exhibit B, and
`
`the Memorandum Opinion and Order in Civil No. 96-173 (District of Minnesota) dated March 30,
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`2004 is attached as Exhibit C.
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`18.
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`Bumble Bee has attempted to expand its use of the LOUIS KEMP mark to
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`products outside of the scope of consent given by Opposer, such as smoked salmon. In a letter from
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`its attorneys Bumble Bee stated "Smoked salmon is a type of processed fish and, therefore, falls
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`within the scope of goods permitted to be sold under our client's (Bumble Bee) LOUIS KEMP
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`mark". Bumble Bee's letter dated May 29, 2001 is attached as Exhibit D.
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`19.
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`Bumble Bee is also attempting to further improperly expand use ofthe LOUIS
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`KEMP marks to other products outside of the scope of consent given by Opposer. Bumble Bee's
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`attempt to expand its use of the LOUIS KEMP mark is contrary to the Court's ruling in the
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`Memorandum Opinion and Order dated March 31, 2001 (Ex. A) in which the Court stated that "it
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`is clear that defendants (Tyson and Bumble Bee) acquired only a limited right to use and register
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`LOUIS KEMP and LOUIS KEMP SEAFOOD COMPANY in connection with surimi based
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`products and related products."
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`20.
`
`Bumble Bee filed two trademark applications, U.S. Application Serial Nos.
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`76-454609 on October 1, 2002 and 76-454734, on October 2, 2002 which further expands the scope
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`of the LOUIS KEMP and LOUIS KEMP SEAFOOD COMPANY marks outside the scope of
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`consent to "frozen, prepared and refrigerated meals and entrees consisting primarily of seafood or
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`imitation seafood; shellfish; seafood-based dips and seafood—based cocktails" and "sauces and
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`marinades“. Bumble Bee has indicated that it intends to further expand its use of the marks
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`containing Opposer’s name to all sorts of other food products.
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`

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`21.
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`At the time that the two trademark applications were filed, Bumble Bee was
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`fully aware of Judge Tunheim's Orders (Ex. A and B) limiting Bumble Bee's use of and right to
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`register the LOUIS KEMP marks to only "surimi based seafood and related products".
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`22.
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`Opposer, through his company Superior Seafoods, L.L.C., filed four trademark
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`applications, U.S. Application Serial Nos. 76—490589 on February 19, 2003, 76490913 on February
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`19, 2003, 76-49058? on February 19, 2003, and 7'6—490588 on February 19, 2003 for the mark
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`LOUIS KEMP for use with restaurant services;
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`rice and precooked rice products; canned,
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`refrigerated, fi'ozen and shelfstable soups, entrees and meals containing meat or poultry; and canned
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`and shelf-stable shellfish and fish, except for surimi-based products.
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`23.
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`Opposer received Notice of Suspensions from the United States Patent
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`Trademark and Office suspending proceedings for U.S. Application Serial Nos. 76490589, 76-
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`490913, 76-4905 87, and 76--490588 pending the disposition of Bumble Bee Seafoods,
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`Inc.
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`applications (Application Serial Nos. 76-454609 and 76-454734).
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`24.
`
`Opposer’s trademark applications are suspended despite the Court’s ruling
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`in the Findings ofFact, Conclusions of Law and Order for Judgment dated September 30, 2002 (Ex.
`
`B), in which the Court stated that Opposer’s use of the mark LOUIS KEMP on a line of wild rice
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`food products does not infringe or dilute Bumble Bee Seafoods, Inc. ’s trademarks for surimi based
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`products. Additionally, the Court stated in the Memorandum Opinion and Order dated March 30,
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`2004 (Ex. C) that Opposer “has retained some right to use his own personal name in marketing food
`
`products that do not impermissibly dilute Bumble Bee’s use of its trademarks ...”
`
`25.
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`Opposer has been damaged and will continue to be damaged if U.S.
`
`Application Serial No. 7'6-454,609 registers for the reasons set forth above.
`
`Opposer, Louis E. Kemp, believes that he will be damaged by registration of the
`
`alleged mark LOUIS KEMP, and requests that registration on application Serial No. 76-454,609 be
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`refused, that no registration be issued to Applicant, and that this Opposition be sustained in favor
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`of Opposer.
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`Enclosed is one check for $600.00 for this Opposition.
`
`This Notice of Opposition is being filed in triplicate.
`
`The Commissioner is authorized to charge any additional fees associated with this
`
`application or credit any overpayment to Deposit Account 11-0982. A duplicate copy of this
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`

`
`
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`communication is enclosed.
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`All correspondence should be addressed to David R. Fairbairn, Kinney & Lange,
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`P.A., THE KINNEY & LANGE BUILDING, 312 South Third Street, Minneapolis, Minnesota 55415-1002.
`
`Respectfully submitted,
`
`LOUIS E. KEMP
`
`
`
`David R. Fairbairn
`
`THE KINNEY & LANGE BUILDING
`
`312 South Third Street
`
`Minneapolis, MN 55415-1002
`Telephone: (612) 339-1863
`Fax: (612)339-6580
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this Correspondence is being deposited with the United States Postal Service
`with sufficient postage as first class mail in an envelope address
`to: Co
`ssioner for Trademarks, 2900 Crystal
`Drive, Arlington, Virginia 22202-3513 on this 3/ day of
`, 2004.
`
`Attorney
`
`

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`UNITED STATES DISTRICT COURT
`
`DISTRICT OF MINNESOTA
`
`
`LOUIS KEMP, SUPERIOR SEAFOODS.
`INC. and QUALITY FENER FOODS,
`lN(.‘..,
`
`Plnintif’t"sfCountcr-Defendants,
`
`v.
`
`TYSON FOODS. INC. and BUMBLE
`8 BE SEAFOODS. INCL,
`
`Dcfcndanlalcounter-Plaintiffs.
`
`
`Civil No. 96-173 (Jl{‘I'rI{L£l
`
`MEMORANDUM OPINION
`AND ORDER
`
`John D. Kelly and Mark D. Pilon. HANFT FRIDE O'BRIEN. HARRIES.
`SWELBAR 8: BURNS. I000 U.S. Bank Place, 130 West Superior Sn’-act.
`Duluth, Minncsota 55802-2094, for plaintiflk.
`
`Ethan Horwitz, Kzndis M. Kahn, Elliot R. Basncr, DARBY Al: DARBY
`P.C.. 805 Third Avenue, New York. NY 10022: and Joseph .I. Roby. .lr.,
`JOHNSON KILLEN & SEILER, P.A., 800 Wells Fargo Center, 230 West
`Superior Street, Duluth, MN, 55802. for defendants.
`
`Plaintiffs filed this lawsuit fdr a declaratory judgment after defendants objected to
`
`plainu'ft's‘ use of the LOUIS KEMP mark in connection with its murkcting, selling and
`
`distribution of wild rice food products.
`Dcfcndanla maintain thal plaintiffs urc
`contractually barred from using LOUIS KEMP on these and other products pursuant to
`
`'
`
`contractual agrccmcnts entered into between Louis Kemp and defendants‘ prcdcccusur in
`
`EXHIBIT
`
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`
`P." age
`
`interest, Oscar Mayer. Plaintiffs claim that these same agreements grant plaintiffs the
`right to use LOUIS KEMP ho all products other than surimi-based seafood produeis.'
`
`This matter
`
`is now before the Court on cross-motions for partial SUITll]‘l3l'_\r'
`
`judgment’ to declare the parties‘ contractual rights and restrictions to use the LOUIS
`
`KEMP mark.‘ Defendants also move for summttry.:tdjudict1tion of plaintiffs‘ torlious
`
`interference with contract and unfair competition claims.
`
`Defendants‘ third motion is to dismiss certain of plaintiiTs' claims as precluded or.
`
`to enforce the consent judgment submitted its pan of defendants"
`in the alternative.
`motion. At oral argument, plaintiffs’ counsel
`informed the Court
`that his client was
`
`agreeable to the consent judgment. Defendants‘ motion is thus moot.‘ As confirmed by
`
`the parties at the motion hearing, the remaining issues in this litigation are: 1) plaintiffs‘
`
`declaratory judgment claim concerning the parties’ contractual
`
`rights to the l-()l,_ll!‘.i
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`KJSMP mark: 2) piaintitTs‘ tortious interference claim against Tyson; and J) defendants‘
`
`trademark infringement counterclnims.
`
`
`
`that
`' "Surimi" is a Fish product
`products that are low in fat and cholesterol.
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`is used in creating artificial crab and other similar
`
`the Court
`2 Although defendants caption their motion as one for summary judgment.
`considers it a motion for partial summary judgment since resolution of the motion in defendants‘
`favor will nut resolve all claims asserted in this case.
`
`" Defendants also bring claims for trademark in fringemcnt on the basis that plaintift's‘ use
`of LOUIS KEMP in connection with wild rice products causes confusion and dilution of
`defendants‘ federally registered trademarks for surimi-based seafood products. These claims are
`not the subject ofany oflhe motions currently pending before the Court.
`
`:1 signed
`the parties submit
`‘ For purposes of the record me, the Court requests that
`stipulation and order relating to entry and enforceability of the consent judgment for the Court's '
`signature.
`
`

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`BACKGROUND
`
`The I-(amp family has been engaged in the wholesale and retail sale of seafood
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`since 1930.
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`In 1985, Louis Kcrnp (“Kcrnp") staned Kcrnp Foods.
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`lnt:.,
`
`it Company that
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`makes and sells artificial crab and similar processed fish products made from surimi.
`
`rt
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`lotmfat processed fish product.
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`. ln I987, Kemp decided to sell his surimi-seafood
`
`business to Oscar Mayer Foods Corporation ("Oscar Mayer"). On March 30, 1087, thr-
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`parties entered into a Stock Acquisition Agreement (the "Agrcement"). As part of the
`
`Agreement, Kemp transferred various U.S. trademarks, including KEMP, KEMP‘s and
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`K.EMP's -St Design, to Oscar Mayer. Kemp also placed contractual restrictions’ on his
`
`right to use the marks in the future. These rcstrictions, embodied in sections 7.5, 7.6 and
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`7.7 ofthc Agreement, provide:
`
`7.5 Seller [Louis E. Kemp] represents and warrants that Seller or any entity
`in which Seller has an interest (except for Company [Kemp Foods.
`lnc.]_)
`has never engaged and is not presently engaged in marketing. selling, or
`otherwise distributing at
`retail any product bearing the name KEMP,
`KEMP‘S. KEMP‘S & Design or any variation thereof except as disclosed
`and described in Exhibit 35 attached hereto. Seller ugrecs that neither
`Seller, nor any entity in which Seller has an interest, shall
`in the future
`market, sell or otherwise distribute any product except as provided in
`Section 7.6 and 7.7 or any other food or any other food or beverage product
`either at wholesale or retail bearing the name KEMP. KEMl"S, KEMP'S Jr.
`Design or any variation thereof.
`
`7.6 Seller agrees that within nine months, Seller or any entity in which
`Seller has an interest, shall cease all use of the name KEMP, KEMP'S, and
`KEMP‘s &, Design in connection with the marlceting,' selling or otherwise
`distributing of any products.’
`
`7.7 it is agreed that Seller or any entity in which Seller has an interest, may
`market, sell or otherwise distribute those products identified on Exhibit 30,
`
`‘ As explained by defendants, section 7.6 provided for rt nine-tnonth phusc—oul period
`after the close of the Agreement and thus was no longer applicable after that time, including,
`when the parties amended the Agreement in I939.
`
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`attached hereto. bearing a composite trademark consisting of the word
`KEMP or KEMP's»and preceded by one or more additional words the
`selection of which shall be approved in advance in writing by Buyer. The
`teams of said Exhibit 36 may not be changed or modified except with the
`approval by Buyer. such approval not to be unreasonably withheld, and by
`an instntmcnt in writing duly signed on behalfoflauycr and Seller.
`It is the
`intention of the parties to avoid any likelihood of confitsion among
`consumer resulting from the use of the respective marks of Seller and
`Buyer.
`It is further agreed that the companies described in Exhibit 37 as
`indicated in Exhibit 37 attached hereto for all purposes except
`in
`connection with the marketing, selling or distribution ofproduets.
`
`Approximately six months after the parties finalized the Agreement, Lee Schecle
`
`("Schools"), Oscar Mayer Vice-President, asked Kemp if Oscar Mayer could use Kemp's
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`personal name, Louis Kemp,_ to market its surimi-based seafood products. Thisiiviirts the
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`firs: time unyonc had contemplated using Louis Kemp in connection with the sale cl’
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`Kemp products. Kemp granted Sclieclc's request and on June 23. I989. approximately-
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`eighteen months after that meeting. the parties entered into Amendment
`
`I
`
`to the I987
`
`Agreement if the "Amendment"). Section 7.8 of that Amendment provides, in its entirety:
`
`to use and
`Seller {Kemp} grants to Buyer [Oscar Mayer} (a) the right
`register the mark LOUIS KEMP, any design marks incorporating LOUIS
`KEMP and/or LOUIS KEMP SEAFOOD COMPANY in the United States
`and elsewhere for suritni-bascd seafood products and such other seafood
`and fish accessory products within the natural zone of product expansion;
`and (b) the right
`to adopt. use and register the name LOUIS "KEMP
`SEAFOOD COMPANY in the United Statcs and elsewhere its a trade name
`or as the corpomtc. firm or business title of any business. operating division
`or subsidiary of Buyer for the sale of surimi-based seafood products and
`such other seafood and fish accessory products within the natural zone of
`product expansion.
`Seller hereby agrees to reasonably cooperate with
`Buyer in obtaining trademark registrations, corporate, firm or business title
`reoorclais ttndlor trade name recordals that involve or include the name
`described in this section 7.8 and shall execute. at no expense to Seller, all
`consents and documents reasonably necessary for said registrations and
`reeorduls. Scllcr further agrees that it shall not attack or assist another in
`attacking the validity of the trademark LOUIS KEMP or any design mttrlts
`incorporating LOUIS KEMP or
`any registration tlmrcof permitting
`
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`hereunder or the trade mime LOUIS KEMP SEAFOOD COMPANY or any
`recordnls thereof owned by Buyer in the Llnitcd Slates 01' clscwhclfi.
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`The Amendment also deleted and inserted is revised version of section 7.7. Amended
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`section 7.7 now provides, in releviint purl:
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`It is agreed that Seller, or any entity in which Seller has an interest. ntay
`utilize a cuntpusitc trademark consislittg of the word KEMP or KEMP'S
`and preceded or followed by one or more additional words the selection of
`which shall be approved in advance in writing by Buyer in connection with
`the marketing, selling or distribution of those products identified in Exhibit
`36.
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`(Emphasis added.) The Amendment expressly provides that “except as herciuubove
`
`amended. all other provisions of the Agreement shall remain in full force and effect."
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`On August 25. 1992. Oscar Mayer. through its porcnt corporation Kraft General
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`Fuuds. sold its surimi seafood business to Tyson Foods, Inc (“Tyson"). Although Tyson
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`acquired "all rights existing under .
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`.
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`. contracts .
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`.
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`. stiles and purchase agreements." lht:
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`sale split ownership rights to "the KEMP and LOUIS KEMP trademarks. According to
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`Schedule 4.5 of the Amended Asset Purchase Agreement. Tyson received rights to the
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`LOUIS KEMP mark and any design or mark incorporating LOUIS KEMP andlor LOUIS
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`‘KEMP SEAFOOD COMPANY while om. Mayer! to-an retained the KEMP, KEMP‘S
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`and K.EMP'S 41: Design marks.
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`In October I995, Quality Finer Foods ("Quality"), at company in which Kemp has
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`an interest, startedkusing LOUIS KEMP in connection with the sale of seasoned wild rice,
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`chicken wild rice soup and wild rice with stir
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`fry vegetables. Toihelp with the
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`niunufuctttring and sale of these products. Quality entered into a Custom Packing and
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`Sales Agreement with Luigine‘s, Inc. The agreement contained a termination provision
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`allowing L,uigino's to cancel the contract with Quality “ifany meaningful action (in the
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`sole discretion of Luigino's attorncy) is threatened or cm-nrnenccd against Quality Finer
`I
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`Foods or its owner. Louis Kemp, for trademark infringement, violation and the likc."
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`Shortly after an article appeared in the Duluth ncwspapcr dist:ussi.ng Kemp and
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`Luigino‘s recent business venture, Tyson sent a cease and desist letter to both parties
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`contesting Quality'5 use of the mark. Luigino's determined that this letter constituted
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`“mouningful action" under the termination provision in the agreement and accordini_:ly
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`suspended its obligations under the contract.
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`Prompted by Tyson's actions, plaintiffs filed this lawsuit
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`for a declaratory
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`judgment of their right to use the mark in connection with the sale and marketingfof wild
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`rice products. Plaintiffs also allege that Tyson tortiously interfered with its contract with
`Luigino's and engaged in unfair competition by interfering with ‘plaintiffs’ rig-ht to market
`its wild rice food products. Defendants answered and countcrclaimed. nllcging statutory
`and common law claims for trademark infringement, false designation. of_ot1'gin. unfair
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`competition,
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`trademttrk dilution, deceptive trade practices. and refusal of trademark
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`applications."
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`L
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`Standard of Review
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`ANALYSIS
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`Rule 56(c) of the Federal Rules of Civil Procedurc provides that summary
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`Judgment
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`"shall Be
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`rendered forthwith if the pleadings, depositions, answers
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`to
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`interrogatories, and admissions on file, together ‘with the. aflidavits,
`
`if any, show that
`
`° Since the commencement of this lawsuit. Tyson has sold its surimi seafood business to
`_B”mbi° 30¢ 3¢ilf00d5 ("Bumble Bee"). Bumble Bee ‘was accordingly added as the real pttrly in
`ttttercst with regards to the contractual and trademark infnngernent claims, Tyson remains -,,
`delendnnt in connection with the totticus interference with contract claim,
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`.5.
`
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`there is no genuine issue as to any material fact and that the moving party is cniitled in a
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`judgment as a matter oflaw." Fed. R. Civ.
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`I’. 56. Only disputes over facts that might
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`affect the outcome of the suit under the goveming substantive law will properly preclude
`
`r
`the entry ofsummaryjudgmcnt. See Andorran v. Liberty Lobby. Inc, 477 U.S. 242 248
`
`(1986). Summary judgment is not appropriate if the dispute about a material fact
`
`is
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`genuine, that is. if the evidence is such that II reasonable jury could rctum a verdict for
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`the nonmoving party. See id.
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`Summary judgment is to be granted only Wheft‘
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`the
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`evidence is such that no reasonable jury could return fl verdict for the nonmoying patty.
`
`See id.
`
`§
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`The moving party hears the burden of bringing forward sufficient evidence. to
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`establish that there are no genuine issues of material fact and that the-movant is entitled to
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`I
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`judgment as a matter of law.‘ See Celarex Corp. v. Carrerl, 477 U.S. 317, 322 (1980).
`‘The nonmoving party is entitled to the benefit of all reasonable infercnccsto be drawn
`
`from the underlying facts in the record. See Veuc Co. v. Aema Casuolry & .S'lrrei'y C.'o..
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`612 F.2d I076 (Sm Cir. 1980). However. the nonmoving party may not nicrely rest upon
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`allegations or denials in‘ its pleadings, but it must set forth specific facts by nffidavits or
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`otherwise showing that there is a genuine issue for trial. See Bum v. Adolph (,‘ooi-.s- C0,,
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`tiso F.2d 930, 932 (3“' Cir. 1981).
`
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`ll.
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`Contractual Rights to LOUIS KEMP
`
`Plaintiffs claim the right
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`to register and use LOUlS'Kl'.-IMP, LOUIS KEMP
`
`COl_LE.C.'TlON and LOUIS KEMP SEAFOOD COLLECTION in connetniun with the
`
`to section 7.?! of
`Plaintiffs maintain that pursuant
`sale of non—surimi food products.
`. Amendment I
`to the I987 Agreement, they have the contractual right to use and register
`-LOUIS KEMP on all products other than those expressly referred to in that section.
`
`Defendants argue that pursuant
`
`to section 7.5 of the Agreement, Kemp clearly and
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`unambiguously agreed not to use LOU_lS KEMP in connection with any products__cxccpt
`in certain limited circumstances not applicable here.
`
`The issue before the Court is one of contract interpretation.
`
`It is undisputed that
`
`Wisconsin law controls the contracts at issue in this case. See Agreement {,4
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`|6.7. Under
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`Wisconsin law,
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`the construction of a contract's temas as well as the deterrnination
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`whether a contract is ambiguous, are issues of law to be decided by the court. not issues
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`.S'.A. He-aly Co. V. Milwaukee Metro. Sewage Dist., 50 F.3d 476, 480
`of fact for the jury.
`(7"‘ Cir. I995) (interpreting Wisconsin law).
`
`The paramount goal of all contract intetprclation is to discern the parties‘ intent.
`
`Patti v. We.tm'n Machine Co., 24] N.W.2d l58, 160 (Wis. 1976). When it contract’:
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`ICITHS are unambiguous, the court must give the contract its plain and ordinary meaning
`and construe it as it stands. Ford Motor Ca. V. Lyons. 405 N.W.2cl 354, 379 (Wis. ct.
`
`App. 191-57). Extrinsic evidence may be considered only il‘a court finds ambiguity in the
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`contract. See Path". 24] N.W.2d at 351; Murphy v. MC,'C1nc.. No. 934322. 1999 WI-
`
`42031 at "3 (Unpublished opinion).
`
`"Contractual
`
`language is ambiguous when it
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`is
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`.3-
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`

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`‘reusgg-mb|y or ranly susceptible of more than one construction."' Id. (quoting Borcimrdt
`
`v. mu, 456 N.W.2d (.53. 656 (Wis. Ct. App. 1990)‘).
`
`A.
`
`Plaintiffs Right to Register and Use LOUIS KEMP
`
`The Court first rtddrcsscs plaintiffs‘ claim that they have the contractual right
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`in
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`use LOUIS KEMP on all products other than those expressly referred to in section 7.8.
`
`According to plaintiffs, even though defendants acquired the right to register and use
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`marl-cs ‘Incorporating LOUIS KEMP, that right.
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`is limited to the realm of “suritni-based
`
`seafood products and such other seafood and fish accessory products withirrthc uaturul
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`zone of product expansion." ‘Therefore, since the Amendment grants defendants only it
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`limited right
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`to use LOUIS KEMP, plaintiffs claim they are entitled to a judgment
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`declaring their right to use the mark in all other respects.
`
`It is clear that defendants acquired only a limited right to use and register LOUIS
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`KEMP and LOUt‘.~i KEMP SEAFOOD COMPANY in connection with stlrimi-Abused
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`seafood and related products.
`
`But
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`the Court disagrees with plaintiffs‘ additional
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`argument that plaintiffs acquired the affirrnativc co