Badia Spice, Inc. v. Gel Spice Co., Inc.

Brief in Support of Gel Spice Co.'s Motion for Summary Judgment regarding Badia's COMPLETE SEASONING trademark claim

by Ronald Coleman

Badia is suing Gel for trademark infringement based on Gel’s sale of its own blend of “all-purpose” or “complete” seasoning as . . . “complete seasoning.” Badia makes a lot of money selling its own complete seasoning formulation. In fact, Badia’s complete seasoning is the company’s number-one product, and Badia does not want competition in the lucrative, growing market for this product, a favorite among Latinos.

To preserve its market position, Badia has for years avoided the trouble of convincing consumers that its complete seasoning offering is of higher quality than that of competitors; that its blend is more desirable than other complete seasonings because of its taste; that chefs prefer it; or that Badia’s complete seasoning otherwise represents a better value than others. Instead, Badia restricts consumers from choosing from among a range of competing complete seasoning

offerings from different manufacturers by threatening competitors with trademark infringement litigation unless they agree to sell their complete seasoning by calling it something else.

Badia has had some, though not complete, success with this strategy, which the record shows it only employs intermittently and on an ad hoc basis. Badia’s in terrorem approach to competition is premised on its registrations for “COMPLETE SEASONING” and “SAZON COMPLETA” (U.S. Reg. Nos. 2,885,777 and 2,856,679) (the “Badia Registrations”). Faced with the cost of litigation against a deep-pocketed, market-dominating adversary, competitors whom Badia deems sufficiently threatening must agree to compete with one hand behind their

backs, or to face litigation. As a result, Badia maintains a de facto monopoly in the complete seasoning category. Badia’s position regarding what competitors may call their own complete seasoning formulations is an inverted version of Henry Ford’s famous saying that “You can have a Model T in any color you like, as long as it’s black.” In this case, you can call your complete seasoning blend whatever you like – as long as you don’t call it complete seasoning.

But generic terms for a product category are available to all to describe their offerings. And complete seasoning is what Gel is selling. Neither the law of trademarks nor the broader rubric of unfair competition support Badia’s aggressive stance. Despite the technical designation of the Badia registrations as “incontestable,” the term “complete seasoning” and its Spanish equivalent are not protectable as a matter of basic trademark law. They are, rather, two forms of

a generic description for a category of seasonings. Badia has erected an artificial barrier to competition in the complete seasoning category by threatening meritless, but expensive, litigation. But Badia, like everyone else, should have to compete on quality, value and customer satisfaction.

By granting Gel summary judgment, this Court will even the playing field in the market for complete seasoning. And Gel is entitled to summary judgment because the term “complete seasoning” is indeed generic. It was born that way – it is so descriptive that its generic quality is clear from a simple inspection of the words. And even if, for argument’s sake, the United States Patent and Trademark Office were correct in allowing the Badia Registrations, the extensive third-party generic use of these terms in the record here demonstrates that they are certainly generic now. That is why Badia has, for all its saber-rattling, never received so much as a dollar in tribute or an admission of wrongdoing from any of the alleged “infringers” it has intimidated through the years into threatening its monopoly.

That Badia settles so cheaply leads to an obvious inference: It does not wish to risk the possibility that a competitor would call its bluff and ask a court to pass on the legitimacy of its purported rights. Badia has thus far avoided judicial scrutiny of its trademark claims here as well, conspicuously making no effort to obtain a preliminary injunction on the strength of its claims – the typical approach of a party with bona fide rights seeking relief from alleged infringement by a direct competitor using an almost identical “mark.” Badia’s moment of truth, however, has come.


(The court denied summary judgment to both sides and set the case down for trial)

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Reference Info: Legal Memoranda: Motions for Summary Judgment/Adjudication | Federal, 11th Circuit, Florida | United States

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ronald Coleman, Mandelbaum Salzburg, PC | Attorney Advertising

Written by:

Ronald Coleman

Mandelbaum Salzburg, PC on:

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