## Facts

- Dennis Perry sold a small-batch condiment called “Metchup,” consisting of either mayonnaise-and-ketchup or mustard-and-ketchup.
- Perry owned a federal word-mark registration for “METCHUP” covering ketchup, mayonnaise, and mustard; the registration became incontestable in 2018.
- Perry’s commercial activity was minimal: about 50–60 bottles produced since 2010, roughly $170 in sales and about $50 profit, sold locally and not online.
- H.J. Heinz planned a U.S. launch of its mayonnaise-and-ketchup blend sold as “Mayochup,” and conducted an online naming contest in which “Metchup” appeared on a mock-up image as a suggested name.
- Heinz did not sell any product labeled “Metchup” and ultimately marketed the product as “Mayochup.”
- Perry sued Heinz asserting Lanham Act claims (counterfeiting, infringement, false designation of origin) and parallel Louisiana-law claims; Heinz counterclaimed seeking cancellation of the METCHUP registration for nonuse/abandonment.
- The district court granted summary judgment to Heinz on Perry’s claims and canceled Perry’s registration for insufficient use in commerce; Perry appealed.

## Issues

1. Whether summary judgment was proper on the ground that no reasonable jury could find a likelihood of confusion between METCHUP and MAYOCHUP, or confusion arising from Heinz’s brief online use of “Metchup.”
2. Whether the district court erred by canceling Perry’s incontestable registration on summary judgment based on nonuse/abandonment, despite evidence of some sales and an intent to continue use.

## Decision

- The court affirmed summary judgment dismissing all of Perry’s federal and state claims, holding the record could not support a likelihood of confusion between METCHUP and MAYOCHUP or actionable confusion from the naming-contest mock-up.
- The court vacated the cancellation of the METCHUP registration and remanded, holding that abandonment presented a fact question inappropriate for resolution on summary judgment on this record.

## Legal Principles

- Trademark infringement and related Lanham Act theories require evidence permitting a reasonable factfinder to conclude there is a likelihood of confusion.
- Brief, limited advertising use of a proposed mark, without any product sold under that mark, may be insufficient to establish actionable confusion in commerce.
- Incontestability does not bar cancellation where a mark is abandoned.
- Abandonment generally turns on nonuse combined with intent not to resume; where there is evidence of some use and stated intent to continue, abandonment may present a triable fact issue.
- Summary cancellation of an incontestable registration is improper when the evidence permits competing inferences regarding continued use or intent to resume use.

## Conclusion

The Fifth Circuit held that Heinz’s MAYOCHUP branding and its brief naming-contest display of “Metchup” did not create a triable likelihood-of-confusion case, but it required further proceedings on Heinz’s counterclaim because the limited sales history and evidence of intent to continue using METCHUP created fact issues as to abandonment.


Perry v. H.J. Heinz Co. Brands, L.L.C., 994 F.3d 466 (5th Cir. 2021)