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Nestle Purina PetCare Co. v. PetSmart, Inc.

United States District Court, E.D. Missouri, Southeastern Division

July 26, 2019

NESTLE PURINA PETCARE CO., Plaintiff,
v.
PETSMART, INC., Defendant.

          MEMORANDUM AND ORDER

          STEPHEN N. LIMBAUGH, JR. UNITED STATES DISTRICT JUDGE.

         Plaintiff Nestle Purina Petcare Company filed this lawsuit against defendant PetSmart, Inc. for trade dress infringement, trademark infringement, and unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq. and Missouri common law. This matter is before the Court on defendant's motion to dismiss plaintiff's complaint for lack of subject matter jurisdiction (#11).

         The complaint alleges that defendant redesigned its cat litter packaging to mimic plaintiff's Tidy Cats cat litter packaging, or “trade dress.” Plaintiff's Tidy Cats brand litter includes two cat silhouettes and colors of yellow/black, yellow/red, white/green, and white/yellow/darker green, depending on the product formulation. Plaintiff alleges that defendant has copied all the elements of the Tidy Cats trade dress for each of the four formulations-including the silhouettes of multiple cats and the same colors corresponding to the same formulation. Plaintiff also alleges that defendant copied its feather design for use on defendant's “lightweight” formulation packaging. Plaintiff states that defendant offered for sale, advertised, and promoted cat litter products with the unauthorized trade dress. Plaintiff claims that the unauthorized trade dress is likely to cause confusion, mistake, and deception as to the source or origin of defendant and/or its products and are likely to falsely suggest a sponsorship, connection, or association between defendant and plaintiff and their products.

         Plaintiff brings three counts against defendant: (1) trade dress infringement, false designation of origin, passing off, and unfair competition under 15 U.S.C. § 1125(a); (2) trademark infringement under 15 U.S.C. § 1114(1); and (3) trade dress infringement, trademark infringement, and unfair competition under Missouri common law.

         Defendant contends it has engaged in no conduct that gives rise to actionable injury under the Lanham Act and thus this Court lacks subject matter jurisdiction over the case. Specifically, defendant states that it considered potential product packaging that plaintiff describes as the “unauthorized trade dress, ” but that the packaging was a “draft of potential product packaging” that was not used “in commerce.” Defendant PetSmart carries a “Great Choice” brand of pet products including pet carriers, crates, aquariums, bedding, litter, food, toys, and numerous other products. The draft packaging for Great Choice cat litter was, according to defendant, never used in “any manner, ” and that it was simply “inadvertently uploaded by PetSmart employees to an internet server.”

         In response to defendant's explanation of the “inadvertent upload, ” plaintiff states that it discovered defendant was offering for sale cat litter products on its PetSmart.com website that contained the unauthorized trade dress described above. The unauthorized trade dress was depicted in product listings on the defendant's website for over a week beginning on the “Black Friday” holiday on November 23, 2018. Plaintiff contacted defendant by telephone and in person to explain that it believed defendant's packing depicted on the website was violating defendant's rights. Defendant responded that the packaging was launched prematurely on its website, that no labels with those designs had yet been printed, and that the new labels would launch in early 2019. Because the parties were unable to resolve the matter, plaintiff filed this lawsuit on December 21, 2018.

         The parties have engaged in further discussions since this lawsuit was filed. Defendant provided to plaintiff revised cat litter packaging in April 2019, but plaintiff insists that the revised packaging still utilizes key elements of plaintiff's Tidy Cats trade dress and is still likely to cause confusion.

         I. Legal Standard

         A Rule 12(b)(1) motion to dismiss for lack of subject-matter jurisdiction may be either a “facial” or “factual” attack on the complaint. Branson Label, Inc. v. City of Branson, Mo., 793 F.3d 910, 914 (8th Cir. 2015). In a facial attack, the court merely determines whether “plaintiff has sufficiently alleged a basis of subject matter jurisdiction…on the face of the pleadings.” Id. (internal quotation omitted). “In a factual attack, matters outside the pleadings, such as testimony and affidavits, are considered.” Id.

         Here, because defendant brings a factual attack against the complaint, the Court may look outside the pleadings.

         II. Discussion

         Defendant contends that plaintiff cannot maintain this trademark action against it because the draft trade dress designs were never used with the sale, advertising, or distribution of any of its products.

         Two statutes are at the heart of plaintiff's claim. The first, 15 U.S.C. § 1114(1)(a), imposes liability for infringement of a registered mark on

any person who shall, without the consent of the registrant…use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or ...

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