The U.S. Court of Appeals for the Fifth Circuit has ruled that H.J. Heinz Co. Brands did not violate the Metchup trademark when it introduced a poll letting consumers choose the name of its mayonnaise-ketchup blend, which ultimately chose “Mayochup” as the winner but included “Metchup” as an option. Perry v. H.J. Heinz Co. Brands LLC, No. 20-30418 (5th Cir., entered April 12, 2021). The district court found no likelihood of confusion between Heinz’ “convenient, yet perhaps gratuitous, mixture” and the plaintiff’s product, which has sold about $170 worth of either mayonnaise-ketchup or mustard-ketchup blends “from the lobby of a nine-room motel adjacent to his used-car dealership in Lacombe, Louisiana.”
The appeals court found that the Metchup name was one of more than 90 suggestions submitted by consumers in Heinz’ poll on what the mayonnaise-ketchup combination should be called, which also included, as the court noted, “Saucy McSauceface, an apparent nod to Boaty McBoatface, the name the Internet proposed for a British research ship.” Following the campaign, “Heinz posted mock-up bottles bearing the proposed names on its website. Heinz never sold bottles with Saucy McSauceface or Metchup on them. It was all for advertising purposes only.”
“Before posting the mock-up bottles, Heinz had its in-house lawyers run a trademark search, which turned up a trademark registration for Metchup,” the court found. “Turns out, Heinz was not the first to grapple with both the problem of having to contemplate ratios and the inconvenience of having to use two bottles when preparing a burger.” Finding no evidence that Metchup was being sold anywhere, Heinz concluded that the trademark had been abandoned, and the district court agreed.
The Fifth Circuit affirmed the dismissal of trademark infringement, but it vacated the district court’s cancellation of the plaintiff’s trademark. “[B]ecause Mr. Perry sold some Metchup and testified that he hoped to sell more, a finder of fact should determine whether his incontestable trademark should be deemed abandoned and canceled,” the court held.