Princess Paper And Sysco Settle "Imperial" Trademark Dispute

Holding:

In this trademark dispute involving the “Imperial” mark, the parties entered into an amicable settlement after bench trial. Specifically, plaintiff registrant (Princess Paper, Inc.) agreed that it would change its logo to make it different from the font used by defendant Sysco Corp, while defendant undertook to bear the cost of replacing and shipping plaintiff’s printing plates. Part of the settlement was plaintiff agreeing to limit its business in which the “Imperial” mark would be used to paper product conversion, i.e., converting bulk paper from paper manufacturers for packaging into their respective individual wrappings. Further, plaintiff undertook to confine the use of the mark to certain products, and only in the western states of California, Oregon, Utah, Nevada, Arizona, and Texas. For its part, defendant Sysco Corp. undertook to place the name “Sysco” on the outer portion of cartons on which the “Imperial” mark would appear. Finally, defendant gave its consent to the restoration of plaintiff’s trademark registration as a concurrent use registration, with Sysco to be named as a concurrent user. Other than the cost of manufacture and shipping of the new printing plates, all to be paid by Sysco Corp. to Princess Paper, Inc., no financial consideration was involved in the settlement.

Detailed Summary:

In its complaint for trademark/trade name infringement and unfair competition and business practices, plaintiff Princess Paper, Inc. alleged that it was the user of the disputed “Imperial” mark for paper products that included napkins, facial tissue, bath room tissue and paper towels.  Plaintiff obtained its registration of the disputed mark in 2001. Plaintiff sold these products to institutional customers like restaurants, janitorial services, hospital, prisons, hotels and motels.  On the other hand, defendant Sysco Corp. was a food services company engaged in the distribution of nationally known products such as Heinz and Hunts, and its own branded and labeled products.

Plaintiff…

More Updates