Trade Practices Warning: Colorable Imitation of a Trademark or Trade Dress Must Be Avoided

Federal and State laws protect the efforts that food manufacturers/distributors put into promoting customer recognition of, and trust in, their products.  Use of a trademark and/or trade dress on packaging are the commercial means typically employed to distinguish products in the same general category.  Responsible businessmen properly take care not to cause confusion about the source of similar products.  Otherwise, as Corto Olive, L.P. (“Corto Olive”) recently demonstrated, a lawsuit may be filed to prevent infringement of trademark and trade dress rights.

Under a federal law (upon which most State laws are modeled), the Lanham Act, the term “trademark” essentially means:

Any word, name, symbol, or device, or any combination thereof, used to identify the goods of one party and distinguish them from the goods of other parties, and to indicate the source of the goods. Often used interchangeably with "mark" to identify either a trademark or a service mark.

International Trademark Association Glossary.  The term “trade dress” essentially means:

The overall commercial image of a product or service; may include the design or    configuration of a product; the packaging of goods, and/or the décor or environment in which services are provided. Can consist of such elements as size, shape, color, etc., to the extent such elements are not functional.

Id.  Under the Lanham Act, use of a colorable imitation of a registered trademark or of a misleading trade dress is actionable in court.  15 U.S.C. §§ § 1114, 1125(a). 

The term “colorable imitation” includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.

15 U.S.C. § 1127.

Corto Olive (and Stanislaus Food Products Company, Inc.) yesterday sued Gemsa Enterprises, LLC (d/b/a Gemsa Oils) for trademark and trade dress infringement in the U.S. District Court for the Central District of California (Case No. 2:18-cv-06399).  Corto Olive is a California-based manufacturer of premium olive oils for restaurateurs and foodservice distributors.  Its 51-49® brand of blended extra virgin and expeller pressed canola oil is one of the company’s signature products.  The product’s 51-49® registered trademark was first used in commerce about eight years ago.  Gemsa Oils is one of Corto Olive’s direct competitors.  It prominently uses a 51/49 brand on its own blend of extra virgin olive and canola oils, and its packaging graphics are remarkably akin to Corto Olive’s trade dress (see below).

Upon filing of the lawsuit, Tom Cortopassi, Senior Managing Partner of Corto Olive, reportedly said:      

Gemsa’s attempt to deceive customers into thinking they are buying our product, instead of a commodity knock-off, is so flagrant that we had to take action.  We are determined to enforce our rights in every instance that a competitor attempts to steal our intellectual property, and we will protect the restaurateurs and foodservice distributors who count on our trademark as the mark of premium olive oil.

This expressed concern is characteristic of what any trademark and/or trade dress infringer may expect, and what our federal and State laws are intended to protect.

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