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UNIVERSAL NUTRITION CORPORATION v. CARBOLITE FOODS

July 21, 2004.

UNIVERSAL NUTRITION CORPORATION, Plaintiff,
v.
CARBOLITE FOODS, INC. AND BIG BEAR NATURAL FOODS, INC. Defendants.



The opinion of the court was delivered by: GARRETT BROWN, District Judge

MEMORANDUM OPINION

This matter comes before the Court upon Carbolite Foods, Inc. ("Carbolite") and Big Bear Natural Foods, Inc. ("Big Bear," collectively with Carbolite, "Defendants") motion for summary judgment and Plaintiff Universal Nutrition Corp.'s ("Universal" or "Plaintiff") cross-motion for summary judgment, pursuant to Fed.R.Civ.P. 56. The Court has jurisdiction over this matter pursuant to 28 U.S.C. § 1331. The Court, having considered the parties' submissions and having heard oral argument from counsel on April 19, 2004, and for the reasons discussed below, will grant Defendants' motion in part and will deny Plaintiff's motion.

  V. BACKGROUND

  This action arises from, inter alia, Universal's claim of trademark infringement and false designation of origin pursuant to 15 U.S.C. § 1051 et seq. against Carbolite and Big Bear. Compl. ¶ 1. Universal's claim is based on "Carbolites's use of the mark CARBORITE as applied to low carbohydrate dietary supplements and based on Big Bear's sale and promotion of those products." Id. Defendant Carbolite has asserted counterclaims against Universal for trademark infringement and false designation of origin and seeks cancellation of Universal's CARB-RITE trademark registration number.

  A. FACTS

  Universal produces and sells a variety of low-carbohydrate products, including chocolate bars. Plaintiff's L. Civ. R. 56.1 Statement ("Pl. R. 56.1 Stmt.") ¶¶ 7, 9. "Defendant Carbolite sells an assortment of low carbohydrate dietary supplements including candy, snacks, crackers, shakes and nutrition bars." Complaint ¶ 13. Defendant Big Bear sells and markets products bearing the CARBORITE mark through its New Jersey retail establishment and its website. Answer ¶¶ 14, 20.

  There is no genuine dispute as to the following facts:
• On or about, July 28, 2001; August 6, 2001; and August 14, 2001, Universal shipped orders which included chocolate bars marked with the CARB-RITE mark to three of its distributors: American Nutritional, Universal Europe BV, and Brazcom Services ("Brazcom"), respectively.*fn1 Pl. R. 56.1 Stmt. ¶¶ 11, 16, 19.
• On August 20, 2001, Carbolite filed its intent-to-use application to register the CARBORITE mark for use in connection with "soft serve ice cream, bake mixes, namely, cookies, waffle mixes, cake mixes, pizza crust mixes and bread mixes, shake mixes, cappucino drink mixes, mousses, namely, flavor sweetened gelatin desserts, cheesecakes, chocolate bars, candy and natural sweeteners" in International Class 30 (Staple Foods). Affidavit of James T. Walsh ("Walsh Aff.") ¶ 12.
• On October 18, 2001, Universal filed its intent-to-use application to register the CARB-RITE mark for "food supplements; nutritional supplements; dietary supplements and nutritional bars for low carb dieters," in International Class 5 (Pharmaceuticals). Walsh Aff. ¶ 11.
• On June 27, 2002, Universal filed its Statement of Use reciting November 1, 2001 as its first date of actual use. Pl. R. 56.1 Stmt. ¶ 28.
• On October 22, 2002, Universal's registration for CARB-RITE was issued. Walsh Aff. ¶ 11.
• On March 24, 2003, Carbolite began selling products with CARBORITE mark. Pl. R. 56.1 Stmt. ¶ 35.
• On April 28, 2003, Carbolite filed its Statement of Use. Walsh Aff. ¶ 12.
• On September 2, 2003, Carbolite's registration for CARBORITE was issued. Walsh Aff. ¶ 12.
  Finally, there is no dispute that the parties' goods are substantially similar and that CARBORITE is confusingly similar to CARB-RITE. Pl. R. 56.1 Stmt. ¶¶ 42-43.

  A. Procedural History

  On July 7, 2003 Universal commenced the instant action against Carbolite and Big Bear. On December 15, 2003, Defendants filed their Answer, Defenses and Counterclaims, with only Carbolite asserting counterclaims against Universal.

  A Scheduling Order was entered by Magistrate Judge Bongiovanni on January 26, 2004. Initial disclosures were to have been exchanged between the parties by February 23, 2004. The Court is not aware of any discovery having been conducted in this case.

  On or about January 31, 2004, Universal moved to strike portions of defendant Carbolite's counterclaims; on April 2, 2004, Judge Bongiovanni denied Universal's motion. A motion for reconsideration of Judge Bongiovanni's decision was filed on April 18, 2004. As of this date, that motion is pending.

  Presently before this Court are the parties' cross-motions for summary judgment.

  XIV. DISCUSSION

  A. Standard for Motion for ...


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