PHILADELPHIA – Discovery is primed to begin in the case of a Tennessee-based proprietor of rib spices and seasonings who is facing claims of trademark infringement levied by potato chip manufacturer Utz Quality Foods.
Utz initially filed a complaint on Feb. 28 in the U.S. District Court for the Eastern District of Pennsylvania, against Troy Long of Fayetteville, Tenn. and his company, Dirty South BBQ, of Winchester, Tenn.
According to the complaint, Dirty South is infringing on Utz’s trademark, which Utz’s corporate predecessor acquired in 2011 by buying Zappe Endeavors. Since 1987, Zappe made and sold “Dirty” brand potato chips.
Utz stated the product line is worth several million dollars.
“Utz’s ‘Dirty’ marks are strong. They are inherently distinctive and represent the exceedingly valuable goodwill of Utz,” the company said.
According to the complaint, Long started selling “Dirty South BBQ” products in April 2014 and more recently launched a line of “Dirty” pork rinds. Dirty South BBQ has products in more than 100 grocery stores in Tennessee, Alabama and Utah.
According to Utz, it sent Dirty South BBQ a cease-and-desist letter in May 2019, explaining Long had “at least constructive knowledge of Utz’s rights” to the word “Dirty” when he began using it and sought his own legal protection.
As of April 7, Utz filed a request for a default judgment to be entered against Long, for receiving no response to the litigation by the specified deadline of April 1. Such a default judgment was entered against the defendants one week later, on April 8.
Long filed a response to the litigation which substantially denied Utz’s trademark infringement claims and which was dated March 23, but not officially entered on the record until April 14.
On this basis, Long filed a motion to set aside the default judgment on April 20, however, two weeks later on May 4, U.S. District Court Judge Wendy Beetlestone granted the motion to drop the default judgment.
UPDATE
On June 19, counsel for the parties met for a joint rule meeting per Federal Rule of Civil Procedure 26(f), in order to discuss discovery process for the litigation.
Utz says it has owned the trademarks at issue in this action since 1987 and asserts the actions taken by the defendants are a clear-cut case of infringement.
“The use of the infringing ‘DIRTY’ designations in connection with the advertising, marketing, offering for sale, sale, and distribution of food seasonings and pork rinds is likely to cause consumer confusion with Utz’s prior, well-known ‘DIRTY’ marks and, accordingly, constitutes, inter alia, trademark infringement, unfair competition and trade name infringement as set forth in more detail in Utz’s complaint,” according to counsel for Utz.
“After all, the infringing ‘DIRTY’ designations and Utz’s ‘DIRTY’ marks are similar in sight, sound, meaning, and commercial impression, as they all share the dominant term ‘DIRTY’, which term is emphasized by defendants in their advertising materials and packaging. Moreover, consumers of products offered by each of Utz and defendants under their respective marks are generally acting on impulse when making a purchase and, thus, do not exercise care. Finally, the parties’ respective goods are competing or related, and are marketed through overlapping channels, including over the Internet.”
In contrast, the defendants restated their claims of improper venue and jurisdiction, and believe their original motion to dismiss should be granted on those grounds. Outside of that argument, Dirty South BBQ contends its reference to “Dirty” is entirely distinguishable from any product manufactured by Utz.
“Defendants maintain that their outstanding motion to dismiss should be granted on the basis of invalid venue and jurisdiction. As more fully set forth in their motion and brief, the full weight of the plaintiff’s claim to personal jurisdiction and venue rests on a single purchase of defendants’ allegedly infringing product by plaintiff’s counsel of record. This is insufficient basis for venue and jurisdiction,” counsel for Dirty South BBQ and Long stated.
“Specifically, the defendants do not believe their product or Marks are infringing, as they evoke a phrase distinct from Utz’s ‘DIRTY’ mark. The ‘Dirty South’ moniker, which comes from music and media, describes the hard-scrabble life of rural, southern workmanship, and does not evoke a similar image as the ‘raw’ or ‘earthy’ mark Utz uses in its advertising.”
Fact-based discovery is due to be completed on Oct. 30 and the trial is due to begin approximately in the spring of 2021.
For counts of unfair competition under the Lanham Act, federal trademark infringement and infringement of trade name, the plaintiff is seeking the court to strip Long’s trademark registration for Dirty South BBQ Co.
The plaintiff is represented by Camille M. Miller, J. Trevor Cloak and Melanie A. Miller of Cozen O’Connor, in Philadelphia.
The defendant is represented by Joel Aaron Ready of Cornerstone Law Firm, in Blandon.
U.S. District Court for the Eastern District of Pennsylvania case 2:20-cv-01146
From the Pennsylvania Record: Reach Courts Reporter Nicholas Malfitano at nick.malfitano@therecordinc.com