The opinion of the court was delivered by: GARRETT BROWN, District Judge
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
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.
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.
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
A. Standard for Motion for ...