United States District Court, D. Colorado
For Online Tools For Parents, LLC, Plaintiff: Michael Jacob Laszlo, Theodore E. Laszlo, Jr., Laszlo & Associates, LLC-Boulder, Boulder, CO.
For Tom Vilsack, Secretary, U.S. Department of Agriculture, Defendant, Counter Claimant: Marcy Elizabeth Cookm, Zeyen Julian Wu, U.S. Attorney's Office-Denver, Denver, CO; Scott David Bolden, U.S. Department of Justice-DC-Commercial Litigation, Washington, DC.
For Online Tools For Parents, LLC, Counter Defendant: Michael Jacob Laszlo, Theodore E. Laszlo, Jr., Laszlo & Associates, LLC-Boulder, Boulder, CO.
OPINION AND ORDER GRANTING MOTION FOR SUMMARY JUDGMENT
Honorable Marcia S. Krieger, Chief United States District Judge.
THIS MATTER comes before the Court pursuant to the Defendant's Motion for Summary Judgment (# 105), the Plaintiff's response (# 106), and the Defendant's reply (# 107).
The Defendant, United States Department of Agriculture (" USDA" ), provides educational information about nutrition. In or about July 2009, the agency set about designing a new graphical representation of a nutritionally-balanced meal to replace the outdated " food pyramid" graphic USDA had been using. According to Donna Johnson-Bailey, by early 2010, the USDA's efforts were focusing on an icon representing a top-down view of a dinner plate (and an adjacent glass of milk) divided into colored radial sectors representing various food groups.
Separately, in March 2010, the agency announced an " Apps for Healthy Kids" competition, in which the public was invited to submit " online applications encouraging children to choose nutritious food and be more physically active." Plaintiff Online Tools for Parents, LLC (" OTFP" ) submitted an application that it had developed for its website, zisboombah.com, which is " dedicated to empowering families with just the right online tools to achieve healthy eating." The application in question was a game entitled " PickChow! Plate" (" PickChow" ) which OTFP had been using on its website since late 2009.
The record contains only a single still image of the PickChow game (Exhibit B to OTFP's response brief) showing a top-down view of an empty white dinner plate divided into five sectors of varying sizes, labeled " dairy," " fruit," " vegetables," " grains & starchy veggies," and " meat & beans." The sectors each radiate out from the center of the plate. A small empty satellite plate, partially obscured by the main plate, is located at the upper right of the main plate and reads " dessert." On either side of the central plate icon are columns of information: the left-hand column instructs: " Drag a food onto your plate and see how your meal adds up!" Beneath it are what appear to be tabs for various food groups (" veggies," " meat & beans," " toppers," " quick picks," etc.) and photographs of various foods, presumably organized by the selected food group (in the example in the record, the " veggies" tab is selected and various serving sizes of artichokes, asparagus, and green beans are shown). The right-hand column reads " Add it up!" and contains what appear to be graphical meters that evaluate different nutritional components (" protein," " carbs," " saturated fat," etc.) of the foods placed on the plate. The bottom of the right-hand column is a readout that appears to evaluate the overall meal, reading " This is a star meal," with the ability to display from one to five stars. The plate image is accompanied by the words " Pick Chow!" in a stylized font; a cartoon representation of an ant character in a t-shirt and a background suggestive of the plate resting on a picnic blanket atop a green gradient background, with blades of grass forming the bottom border of the image.
OTFP submitted the PickChow game to the contest in or about March 2009. Although there is some dispute on this point, the Court accepts OTFP's contention that the PickChow game as submitted was accompanied by a statement that the game and its components were trademarks belonging to OTFP, although it is undisputed that OTFP did not formally register the PickChow game with the Patent and Trademark Office until February 2012. On September 29, 2010, the USDA declared the PickChow game the winner of the contest's " tools" category.
Meanwhile, the USDA continued to develop the graphic it intended to use to replace the food pyramid. After a series of meetings and focus groups to refine the design, on June 2, 2011, the USDA formally released its selected icon. Entitled " ChooseMyPlate.gov" (the " MyPlate icon" ), the icon consists of a top-down view of a white dinner plate that is entirely filled by four colored sectors (or, perhaps, " wedges" ). The four sectors are labeled " fruits," " grains," " protein," and " vegetables." The " vegetables" and " grains" sectors are comparatively oversized, and thus, the four sectors converge near, but not precisely at, the center of the plate. Adjacent to the upper right of the plate is a small satellite circle (itself appearing to be a plate or perhaps a glass), entirely filled with a blue circle labeled " dairy." The plate image rest on a solid green background, and is accompanied by the image of a fork on the left side. The test beneath the image reads " ChooseMyPlate.gov" in black and white text.
On June 7, 2011, Ms. Laszlo wrote to the USDA, stating that " [OTFP] will be filing a complaint regarding the USDA's improper use of the PickChow! Plate concept, which you will recall was a centerpiece of our award winning app." On or about June 13, 2011, OFTP filed a request to register the PickChow image (consisting solely of the plate images, sector divisions, and labels, not the accompanying columns and game features, ant character, etc.) as a trademark with the Patent and Trademark Office. That registration was granted on February 21, 2012. (The registration certificate does not appear in the summary judgment record, but is attached to the Amended Complaint as Exhibit A and is properly the subject of judicial notice.) OFTP then commenced the instant action. As currently pled, OFTP asserts two claims against the USDA, both under the Lanham Act, 15 U.S.C. § 1051 et seq.: (i) trademark infringement, and (ii) false designation of origin/unfair competition. The USDA filed an Answer and Counterclaim (# 90), seeking the cancellation of OTFP's registration under 15 U.S.C. § 1119.
The USDA moves (# 105) for summary judgment on both claims, arguing that, as a matter of law, the MyPlate icon does not infringe on the PickChow mark because OTFP cannot show a likelihood of confusion between the two images.
A. Standard of review
Rule 56 of the Federal Rules of Civil Procedure facilitates the entry of a judgment only if no trial is necessary. See White v. York Intern. Corp., 45 F.3d 357, 360 (10th Cir. 1995). Summary adjudication is authorized when there is no genuine dispute as to any material fact and a party is entitled to judgment as a matter ...