1 

UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

MASTRONARDI PRODUCE, LTD., 

 a Canadian Corporation, 

 Plaintiff, Case No. 2:15-cv-12331 

v. 

 Hon. Paul D. Borman 

LAKESIDE PRODUCE, INC., 

 a Canadian Corporation, 

 Defendant. 

____________________________________________________________ 

 

MOTION FOR PRELIMINARY INJUNCTION 

 NOW COMES Plaintiff, Mastronardi Produce, Ltd. (“Mastronardi”), by and 

through its counsel, and moves this Honorable Court for an Order preliminarily 

enjoining Defendant, Lakeside Produce, Inc. (“Lakeside”), for the reasons set forth 

below and in the attached brief, from continuing to import into the United States or 

use in commerce in the United States, the trademark MEDLEY’S (or any other 

marks that are confusingly similar to Mastronardi’s MEDLEY and GOURMET 

MEDLEY® marks) connection with tomatoes, peppers, cucumbers, and 

strawberries. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 1 of 37 Pg ID 36
2 

1. Since 2009 Mastronardi has sold millions of containers of multicolored 

cocktail tomatoes under the cobranded marks GOURMET MEDLEY® and 

MEDLEYTM. 

2. Lakeside has recently begun selling containers of multicolored cocktail 

tomatoes under the name MEDLEY’S. 

Images of the respective parties’ products as currently sold are depicted 

below, Mastronardi on the left and Lakeside on the right: 

 3. The dominant word in each of the competing brands, MEDLEYTM and 

MEDLEY’S, is virtually the same. 

 4. Each product is sold in a 2-pound size and packaged in virtually 

identical clear plastic clamshell-style containers. 

 5. The products are also sold at the same price ($5.99), to the same 

customers (e.g. Costco customers). 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 2 of 37 Pg ID 37
3 

 6. Consumer confusion between the two brands is likely to result unless 

Lakeside is enjoined from continuing to market its tomatoes under the MEDLEY’S 

brand. 

7. Mastronardi and Lakeside are direct competitors with headquarters 

located five miles apart. 

8. Mastronardi and Lakeside products are literally sold side-by-side in the 

same stores. 

9. Mastronardi’s GOURMET MEDLEY® / MEDLEYTM product had 

been in the marketplace for years prior to the appearance of Lakeside’s MEDLEY’S. 

10. Lakeside is not a newcomer to the industry and it simply is beyond 

belief that Lakeside would launch a product, for sale to market giants like Costco, 

absent knowledge that its direct competitor had for years been selling a cocktail type 

tomato virtually identical in appearance under the same name. 

11. Accordingly, Mastronardi requests that the bond in this matter be 

waived or set reasonably low given the strong inference that Lakeside knew about 

Mastronardi’s product before Lakeside introduced the competing MEDLEY’S 

product. 

L.R. 7.1 COMPLIANCE 

 Lakeside was personally served with the complaint on Monday, July 27, 2015, 

but it has yet to answer or otherwise respond to the complaint. Accordingly, on 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 3 of 37 Pg ID 38
4 

instructions from the Court, Mastronardi states that since Lakeside has yet to file an 

appearance it was not possible to discuss the motion with Lakeside prior to 

file. Moreover, prior to filing the complaint Mastronardi did correspond with two 

different firms claiming to represent Lakeside, and Mastronardi provided written 

notice to the second firm that Mastronardi would be seeking injunctive relief if the 

matter could not be resolved. 

 

Respectfully submitted, 

s/ Mark D. Schneider (P55253) 

GIFFORD, KRASS, SPRINKLE, 

ANDERSON & CITKOWSKI, P.C. 

2701 Troy Center Drive, Suite 330 

Troy, Michigan 48084 

(248)647-6000 

(248)647-5210 (Fax) 

litigation@patlaw.com 

s/ David E. Einstandig (P47344) 

THAV GROSS, PC 

30150 Telepgraph Road, Suite 444 

Bingham Farms, Michigan 48025 

(248) 645-8232 

(248) 220-1410 (Fax) 

deinstandig@thavgross.com 

Attorneys for Plaintiff 

Dated: August 7, 2015 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 4 of 37 Pg ID 39
 

UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

MASTRONARDI PRODUCE, LTD., 

 a Canadian Corporation, 

 Plaintiff, Case No. 2:15-cv-12331 

v. 

 Hon. Paul D. Borman 

LAKESIDE PRODUCE, INC., 

 a Canadian Corporation, 

 Defendant. 

__________________________________________________________________ 

 

BRIEF IN SUPPORT 

OF THE MOTION FOR PRELIMINARY INJUNCTION 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 5 of 37 Pg ID 40
i 

 

TABLE OF CONTENTS 

TABLE OF AUTHORITIES ................................................................................... iii 

INDEX OF EXHIBITS ATTACHED TO THE BRIEF ............................................ v 

APPENDIX INDEX ................................................................................................ vi 

CONCISE STATEMENT OF ISSUES PRESENTED ............................................. 1

CONTROLLING OR MOST APPROPRIATE AUTHORITY ................................ 2 

I. RECITATION OF FACTS ............................................................................... 2 

A. Mastronardi Produce, Ltd. ........................................................................... 2 

B. GOURMET MEDLEY® is a Registered Mark .......................................... 5 

C. Lakeside Produce, Inc. ................................................................................. 6 

D. The Appearance in the Marketplace of Lakeside’s Product ........................ 6 

II. STANDARD OF REVIEW ........................................................................... 10 

III. ARGUMENT .................................................................................................. 11 

A. Likelihood of Success on the Merits ......................................................... 11 

 1. The Standard for Success ...................................................................... 12 

 2. GOURMET MEDLEY® / MEDLEYTM TM are Strong Mark(s) for 

 Multicolored Cocktail Tomatoes .......................................................... 13 

 3. Relatedness of the Goods ...................................................................... 18 

 4. Similarity of the Marks ......................................................................... 19 

 5. Evidence of Actual Confusion .............................................................. 21 

 6. Marketing Channels Utilized ................................................................ 21 

 7. Degree of Customer Care and Sophistication ....................................... 22 

 8. Lakeside’s Intent in Selecting its Mark ................................................ 22 

B. Irreparable Injury Follows from the Showing of A Likelihood of ............ 23 

 Confusion ................................................................................................... 23 

C. Harm to the Public May Result If An Injunction is Not Granted .............. 24 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 6 of 37 Pg ID 41
ii 

 

D. The Public Has An Interest In Not Being Confused Concerning the Source 

of Food ....................................................................................................... 24 

CONCLUSION ........................................................................................................ 25 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 7 of 37 Pg ID 42
iii 

 

TABLE OF AUTHORITIES 

Cases Page

American Throwing Co. v. Famous Bathrobe Co., 

 250 F.2d 377, 382 (CCPA 1957) .......................................................................... 20 

Ashland Oil v. Olymco, 

 1995 U.S. App. LEXIS 24652 (6th Cir. Ky. Aug. 21, 1995) ............................... 14 

Century 21 Real Estate Corp. v. Century Life of America, 

 970 F.2d 874, 877 (Fed. Cir. 1992) ...................................................................... 20 

Citizens Banking Corp. v. Citizens First Bancorp, Inc., 

 2007 U.S. Dist. LEXIS 88325 (E.D. Mich. Dec. 3, 2007) ................................... 19 

Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 

 109 F.3d 275, 286 (6th Cir. Ohio 1997) ............................................................... 17 

Dino Drop, Inc. v. Chase Bar & Grill, LLC, 

 2011 U.S. Dist. LEXIS 18088, 20-21 (E.D. Mich. Feb. 24, 2011) ............... 13, 14 

Express Welding, Inc. v. Superior Trailers, LLC, 

 700 F. Supp. 2d 789, 797 (E.D. Mich. 2010) ....................................................... 13 

Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 

 670 F.2d 642, 648 (6th Cir. 1982) ................................................................... 2, 12 

Hershey Co. v. Art Van Furniture, Inc., 

 2008 U.S. Dist. LEXIS 87509 (E.D. Mich. Oct. 24, 2008) .......................... 15, 16 

Innovation Ventures, LLC v. N2G Distrib., 

 2008 U.S. Dist. LEXIS 30047, 5-6 (E.D. Mich. Apr. 14, 2008) ................... 11, 23 

Inwood Labs., Inc. v. Ives Labs., Inc., 

 456 U.S. 844, 851 n.11 (1982) ............................................................................. 13 

Lorillard Tobacco Co. v. Amouri's Grand Foods, Inc., 

 453 F.3d 377, 382 (6th Cir. 2006) ........................................................................ 23 

Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 

 128 F.3d 1111, 1115 (7th Cir. 1997) .................................................................... 19 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 8 of 37 Pg ID 43
iv 

 

Midwest Guar. Bank v. Guar. Bank, 

 270 F. Supp. 2d 900 (E.D. Mich. 2003) ............................................ 19, 21, 22, 24 

Pizzeria Uno Corp. v. Temple, 

 747 F.2d 1522, 1529-1530 (4th Cir. S.C. 1984) ................................................... 20 

Premium Balloon Access., Inc. v. Creative Balloons Mfg., 

 573 Fed. Appx. 547, 556 (6th Cir. Ohio 2014) .................................................... 14 

Reynolds v. Banks, 

 2012 U.S. Dist. LEXIS 91064, 12-13 (E.D. Mich. June 29, 2012) ..................... 11 

Valvoline Co. v. Magic Quick Lube, 

 2009 U.S. Dist. LEXIS 100944, 6-7 (E.D. Mich. Oct. 29, 2009) ........................ 11 

Wynn Oil Co. v. Thomas, 

 839 F.2d 1183, 1190-1191 (6th Cir. Tenn. 1988) ................................................ 20 

Rules

15 U.S.C. § 1052(f) ........................................................................................... 11, 15 

15 U.S.C. § 1114(1) ................................................................................................. 12 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 9 of 37 Pg ID 44
v 

 

INDEX OF EXHIBITS ATTACHED TO THE BRIEF 

Exhibit A Declaration of Paul Mastronardi 

Exhibit B U.S. Registration No. 3687675 and USPTO File History 

Exhibit C Copies of Canadian Trademarks TMA799808 and TMA756261 

Exhibit D Images from LakesideProduce.com 

Exhibit E Declaration of Debra Nichols 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 10 of 37 Pg ID 45
vi 

 

APPENDIX INDEX 

Reynolds v. Banks, 

2012 U.S. Dist. LEXIS 91064, 12-13 (E.D. Mich. June 29, 2012) ................ App. 1 

Valvoline Co. v. Magic Quick Lube, 

2009 U.S. Dist. LEXIS 100944, 6-7 (E.D. Mich. Oct. 29, 2009) ................... App. 2 

Innovation Ventures, LLC v. N2G Distrib., 

2008 U.S. Dist. LEXIS 30047, 5-6 (E.D. Mich. Apr. 14, 2008) .................... App. 3 

Dino Drop, Inc. v. Chase Bar & Grill, LLC, 

2011 U.S. Dist. LEXIS 18088, 20-21 (E.D. Mich. Feb. 24, 2011) ................ App. 4 

Ashland Oil v. Olymco, 

1995 U.S. App. LEXIS 24652 (6th Cir. Ky. Aug. 21, 1995) ......................... App. 5 

Hershey Co. v. Art Van Furniture, Inc., 

2008 U.S. Dist. LEXIS 87509 (E.D. Mich. Oct. 24, 2008) ............................ App. 6 

Hershey Co. v. Art Van Furniture, Inc., 

2008 U.S. Dist. LEXIS 87509 (E.D. Mich. Oct. 24, 2008) ............................ App. 7 

Citizens Banking Corp. v. Citizens First Bancorp, Inc., 

2007 U.S. Dist. LEXIS 88325 (E.D. Mich. Dec. 3, 2007) ............................. App. 8 

Innovation Ventures, LLC v. Body Dynamics, Inc., 

2009 U.S. Dist. LEXIS 26535, 9-10 (E.D. Mich. Mar. 30, 2009) .................. App. 9 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 11 of 37 Pg ID 46
1 

 

CONCISE STATEMENT OF ISSUES PRESENTED 

Since 2009 Mastronardi Produce, Ltd., (“Mastronardi”) has sold containers of 

multicolored cocktail tomatoes under the cobranded marks GOURMET MEDLEY® 

and MEDLEYTM. Defendant, Lakeside Produce, Inc. (“Lakeside”) has recently 

begun selling containers of multicolored cocktail tomatoes under the name 

MEDLEY’S. Images of the respective parties’ products as currently sold are 

depicted below, Mastronardi on the left and Lakeside on the right: 

Consumer confusion between the two brands is likely to result unless Lakeside is 

enjoined from continuing to market its tomatoes under the MEDLEY’S brand. The 

dominant word in each of the competing brands, MEDLEYTM and MEDLEY’S, is 

virtually the same. Each product is sold in a 2-pound size and packaged in virtually 

identical clear plastic clamshell-style containers. The products are also sold at the 

same price ($5.99), to the same customers (e.g. Costco customers). 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 12 of 37 Pg ID 47
2 

 

CONTROLLING OR MOST APPROPRIATE AUTHORITY 

FOR RELIEF SOUGHT 

 This case involves issues of trademark infringement and unfair competition. 

Mastronardi is seeking a preliminary injunction against the continued sale of 

Lakeside’s MEDLEY’S product. The eight factors outlined in Frisch's Rests., Inc. 

v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982) should 

control the Court’s consideration of the likelihood of confusion analysis. This Court 

has also issued several decisions involving preliminary injunctions in trademark 

cases and Mastronardi refers the Court to those cases and relevant Sixth Circuit 

decisions, citations to which are included in the appropriate sections of this brief. 

I. RECITATION OF FACTS 

A. Mastronardi Produce, Ltd. 

Mastronardi is a family rooted business based in Kingsville (Leamington) 

Ontario that, together with its affiliates, has been growing, manufacturing and 

distributing fresh greenhouse grown produce for 60 years. See Ex. A – Dec. of Paul 

Mastronardi at ¶ 2. Mastronardi and its affiliates are one of the largest, if not the 

largest, fresh vegetable greenhouse operations in North America, growing and 

distributing tomatoes, peppers, cucumbers, and other fresh vegetables. Id. at ¶ 3. 

Mastronardi’s SUNSETTM house brand is well known in the marketplace and its 

products are sold on a worldwide basis, including throughout the United States in 

grocery and other retail locations large and small. Id. at ¶ 4. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 13 of 37 Pg ID 48
3 

 

In 1995 Mastronardi was a pioneer in the industry when it started branding 

fresh produce. Id. at ¶ 5. Tomatoes were no longer just going to be labeled 

“tomatoes”. They would instead be branded apart from Mastronardi’s house 

brand/trade name so customers could separately recognize and call for produce by 

name. Mastronardi started with a smaller sized tomato that it branded CAMPARI®. 

Id. at ¶ 6. Twenty years later CAMPARI® is known nationally and internationally 

as the TOMATO LOVERS TOMATO®. Id. at ¶ 7, 8. Other brands followed, 

including ANGEL SWEET® and ZIMA® tomatoes, SWEET TWISTERTM and 

ONE SWEETTM peppers, ONE SWEET® cucumbers, WOWTM strawberries, and 

many others. Id. at ¶ 9. Mastronardi currently owns 61 U.S. Trademark 

Registrations protecting its various brands, with 30 additional applications for 

registration in process in the United States Patent and Trademark Office (“USPTO”). 

Id. at ¶ 10. 

The Mastronardi mark/brands at issue in this case are GOURMET 

MEDLEY® and MEDLEYTM, which are used in connection with multicolored 

cocktail tomatoes. And to be clear, the full brand name is GOURMET MEDLEY®, 

but the dominant, and separately protectable, portion of the brand is MEDLEYTM. 

Mastronardi began selling GOURMET MEDLEY® / MEDLEYTM tomatoes 

at least as early as August 2009. Id. at ¶ 11. The tomatoes are currently sold in a 

number of different sizes (by weight) to the general public, with the largest size 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 14 of 37 Pg ID 49
4 

 

being a 2-pound size and packaged in clear plastic clamshell-style container. Id. at 

¶ 12. An image of the product as currently packaged is shown here: 

Id. at ¶ 13. 

Mastronardi began using GOURMET MEDLEY® packaging and 

promotional material featuring the dominant term “MEDLEY” written considerably 

larger than GOURMET in 2010. Id. at ¶ 14. 

 A prior version of packaging for a 1lb container dating from 2009 is shown 

here: 

 

 

 Id. at ¶ 15. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 15 of 37 Pg ID 50
5 

 

 By the end of 2009, sales in the United States of GOURMET MEDLEY® / 

MEDLEYTM tomatoes exceeded $1 million dollars. Id. at ¶ 16. Total U.S. sales 

through 2014 have exceeded $50 million dollars. Id. at ¶ 17. 

 Since 2009 GOURMET MEDLEY® / MEDLEYTM tomatoes have been sold 

in or through more than 250 stores and chains. Id. at ¶ 18. They are widely available 

for purchase in the United States, and can be found at Costco, Food Lion, and other 

large grocery and retail chains. Id. at ¶ 19. Mastronardi advertises and promotes 

GOURMET MEDLEY® / MEDLEYTM multicolored cocktail tomatoes by way of 

the actual product packaging, in brochures, and on social media. Id. at ¶ 20. 

B. GOURMET MEDLEY® is a Registered Mark 

Mastronardi owns U.S. Registration No. 3687675 (“the ‘675 Registration”), 

which is registered on the Supplemental Register of the USPTO and directed to use 

of GOURMET MEDLEY® in connection with fresh tomatoes, raw tomatoes and 

unprocessed tomatoes. See Ex. B – the ‘675 Registration and related USPTO file 

history. The ‘675 Registration was issued on September 22, 2009, and in October 

2014 Mastronardi filed papers with the USPTO confirming that it was continuing to 

use the mark. Id. In addition, Mastronardi secured Canadian Registration Nos. 

TMA799808 and TMA756261, which are directed, respectively, to use of MEDLEY 

in connection with fresh fruits, herbs (edible) for cooking purposes, and GOURMET 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 16 of 37 Pg ID 51
6 

 

MEDLEY for vegetables, and fresh fruits, herbs (edible) and vegetables. See Ex. C

– Copies of TMA799808 and TMA756261. 

C. Lakeside Produce, Inc. 

Defendant Lakeside is a Leamington Ontario based (Cervini) family owned 

business that has been growing produce in greenhouses for several generations. See 

Ex. D – Images from LakesideProduce.com. Lakeside’s offices are about 5 miles 

from Mastronardi headquarters. Id. 

Lakeside sells peppers, tomatoes, and eggplant in direct competition with 

Mastronardi. Id. In some cases, Lakeside’s products can be found in the same stores 

with Mastronardi’s produce, with competing products positioned next to, or even on 

top of, each other, in plastic clamshell-style containers. 

D. The Appearance in the Marketplace of Lakeside’s Product 

In May 2015 Mastronardi discovered Lakeside selling multicolored cocktail 

tomatoes in 2-pound packages under the name MEDLEY’S in at least one Detroit 

area Costco. See Ex. A at ¶ 21. 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 17 of 37 Pg ID 52
7 

 

An image of the Lakeside MEDLEY’S product is shown here: 

See Ex. E – Declaration of Debra Nichols at ¶ 8. 

 An even greater concern for Mastronardi was that its own GOURMET 

MEDLEY® / MEDLEYTM multicolored cocktail tomatoes and the Lakeside 

MEDLEY’S multicolored cocktail tomatoes were later found on sale together at 

Costco. 

In a visit to the Commerce Township, Michigan Costco at about 10AM on 

July 2, 2015, Mastronardi found its own GOURMET MEDLEY® / MEDLEYTM 

product stacked on the same pallet, in the same vertical stack, with the Lakeside 

MEDLEY’S product. Id. at ¶ 2. 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 18 of 37 Pg ID 53
8 

 

The image below shows the boxes of the Mastronardi product stacked on top 

of the Lakeside product at the Commerce Township Costco: 

Id. at ¶ 3. 

 This next image shows the Mastronardi product in the box on the top of the 

stack: 

Id. at ¶ 4. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 19 of 37 Pg ID 54
9 

 

 And next this next image shows the Lakeside product, as found in the first 

Lakeside box of the stack (fifth box from the top) – the four upper boxes having been 

lifted off so this image could be taken: 

Id. at ¶ 5. 

 One container of each product was purchased during the July 2nd visit. 

Images of the purchased containers and the purchase receipt follow: 

Id. at ¶ 6 – 9. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 20 of 37 Pg ID 55
10 

 

 

 The purchase price for the Mastronardi product and the Lakeside product was 

the same - $5.99. Costco had also assigned the same stockkeeping unit (SKU), 

21046, to both products. 

Mastronardi contacted Lakeside following the May discovery to try and 

resolve concerns regarding the likelihood of brand confusion, but no agreement was 

reached. Mastronardi then initiated this litigation, and also parallel litigation against 

Lakeside in Canada. 

This is not the first time Mastronardi has taken steps to protect its GOURMET 

MEDLEY® / MEDLEYTM brand. See Ex. A at ¶ 22. Mastronardi has written to 

alleged infringers on at least one other occasion involving infringement of the 

Canadian registration. Id. On that occasion the alleged infringer responded by 

agreeing to voluntarily change its name. Id. 

Given the similarity of the goods and the brands involved, and the fact that 

the goods are a food product sold to the general public, Mastronardi seeks a 

preliminary injunction to address its concerns and stop Lakeside’s continued use of 

MEDLEY’S. 

II. STANDARD OF REVIEW 

The Court has issued several decisions involving preliminary injunctions in 

trademark cases and is obviously well aware of the four factors to be considered in 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 21 of 37 Pg ID 56
11 

 

connection with a preliminary injunction motion, to wit: (1) whether the movant has 

a strong likelihood of success on the merits; (2) whether the movant would suffer 

irreparable injury without the injunction; (3) whether issuance of the injunction 

would cause substantial harm to others; and (4) whether the public interest would be 

served by the issuance of the injunction. See App. 1 - Reynolds v. Banks, 2012 U.S. 

Dist. LEXIS 91064, *12-13 (E.D. Mich. June 29, 2012); App. 2 - Valvoline Co. v. 

Magic Quick Lube, 2009 U.S. Dist. LEXIS 100944, *6-7 (E.D. Mich. Oct. 29, 2009); 

and App. 3 - Innovation Ventures, LLC v. N2G Distrib., 2008 U.S. Dist. LEXIS 

30047, *5-6 (E.D. Mich. Apr. 14, 2008). 

III. ARGUMENT 

A. Likelihood of Success on the Merits 

 Mastronardi has a strong likelihood of success on the merits. The GOURMET 

MEDLEY® / MEDLEYTM mark(s) have been in use for at least five years and the 

Court can and should presume the mark(s) have acquired distinctiveness / secondary 

meaning pursuant to 15 U.S.C. § 1052(f). Sales and distribution in the United States 

of the GOURMET MEDLEY® / MEDLEYTM product have also been extensive, 

exceeding $50 million dollars through 2014. The dominant portion of each brand 

MEDLEYTM versus MEDLEY’S is virtually identical. The goods are virtually 

identical. And the two products can be found on sale in the same major retail store, 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 22 of 37 Pg ID 57
12 

 

in the same clamshell style packaging, to the same customers, at the same price, 

bearing the same sku code. 

1. The Standard for Success 

 This is a trademark infringement and unfair competition case. Federal 

trademark infringement claims are governed by 15 U.S.C. § 1114(1). Under that 

provision, trademark infringement occurs when a person, acting without the 

permission of a trademark's owner, "use[s] in commerce any reproduction, 

counterfeit, copy, or colorable imitation of a registered mark in connection with the 

sale, offering for sale, distribution, or advertising of any goods or services on or in 

connection with which such use is likely to cause confusion, or to cause mistake, or 

to deceive." Id. 

 It cannot be disputed that Mastronardi never authorized Lakeside to use 

MEDLEY’S. 

For the likelihood of confusion analysis the Court should consider the eight 

factors outlined in Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 

F.2d 642, 648 (6th Cir. 1982), to wit: (1) strength of the plaintiff's mark; (2) 

relatedness of the goods; (3) similarity of the marks; (4) evidence of actual 

confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) 

defendant's intent in selecting the mark; (8) likelihood of expansion of the product 

lines. See Frisch's Rests., Inc., 670 F.2d at 648. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 23 of 37 Pg ID 58
13 

 

2. GOURMET MEDLEY® / MEDLEYTM TM are Strong Mark(s) for 

Multicolored Cocktail Tomatoes 

GOURMET MEDLEY® / MEDLEYTM is a strong mark(s) when used in 

connection with multicolored cocktail tomatoes, having acquired distinctiveness 

following many years of use and extensive sales. 

a. GOURMET MEDLEY® / MEDLEYTM Have Secondary 

Meaning 

 "The strength of a mark is generally the result of (1) its unique nature; (2) its 

owner's intensive advertising efforts; and (3) which of the four categories the mark 

occupies: generic, descriptive, suggestive or arbitrary/fanciful." App. 4 - Dino 

Drop, Inc. v. Chase Bar & Grill, LLC, 2011 U.S. Dist. LEXIS 18088, 20-21 (E.D. 

Mich. Feb. 24, 2011)(quoting Express Welding, Inc. v. Superior Trailers, LLC, 700 

F. Supp. 2d 789, 797 (E.D. Mich. 2010)). 

Looking at the four categories of marks, it is hornbook law that suggestive or 

arbitrary/fanciful marks are automatically entitled to a degree of protection. It is 

also hornbook law that generic marks can never be protected, and that descriptive 

marks are entitled to protection once the mark has acquired a “secondary meaning” 

- which is to say that in “...minds of the public, the primary significance of a product 

feature or term is to identify the source of the product rather than the product." 

Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982). Courts in this 

Circuit consider seven factors to determine if a mark has acquired secondary 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 24 of 37 Pg ID 59
14 

 

meaning: (1) direct consumer testimony; (2) consumer surveys; (3) exclusivity, 

length and manner of use; (4) amount and manner of advertising; (5) amount of sales 

and number of customers; (6) established place in the market; and (7) proof of 

intentional copying. See App. 4 - Dino Drop, Inc. v. Chase Bar & Grill, LLC, 2011 

U.S. Dist. LEXIS 18088 (E.D. Mich. Feb. 24, 2011). 

Lakeside is likely to vigorously contend that GOURMET MEDLEY® / 

MEDLEYTM is descriptive and unprotectable for at least the reason that GOURMET 

MEDLEY® was registered on the Supplemental Register in 2009. But, even if one 

accepts for purposes of this motion that the mark(s) was descriptive back in 2009, 

the argument would fail today because GOURMET MEDLEY® / MEDLEYTM long 

ago acquired the requisite secondary meaning. 

b. Secondary Meaning is Presumed After Five Years Of Use 

 The Court is permitted by law to presume that the GOURMET MEDLEY® / 

MEDLEYTM mark(s) has acquired secondary meaning, and is protectable, because 

the mark(s) have been in continuous use since August 2009. Under Federal law, five 

years of use merits a presumption that a mark has acquired secondary meaning. See 

15 U.S.C. 1052(f); Premium Balloon Access., Inc. v. Creative Balloons Mfg., 573 

Fed. Appx. 547, 556 (6th Cir. Ohio 2014))”...while it may make sense to infer that 

a mark so used has acquired secondary meaning...”); App. 5 - Ashland Oil v. 

Olymco, 1995 U.S. App. LEXIS 24652, *2 (6th Cir. Ky. Aug. 21, 1995) (“Ashland 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 25 of 37 Pg ID 60
15 

 

obtained transfer of the mark to the principal register of the USPTO in March 1988, 

under § 2(f) of the Lanham Act, which allows for a presumption of distinctiveness 

of the mark after substantial exclusive use in commerce for five years.”); App. 6 - 

Hershey Co. v. Art Van Furniture, Inc., 2008 U.S. Dist. LEXIS 87509, *10 (E.D. 

Mich. Oct. 24, 2008)(“Federal law recognizes as prima facie evidence of 

distinctiveness, the fact that a mark or trade dress has been used in commerce, for a 

minimum of five years, and in a manner both substantially exclusive and continuous. 

15 U.S.C. § 1052(f).”). 

Mastronardi contends here that MEDLEYTM is its own mark, based on fact 

that the term is highlighted on the product label and in other materials merits. 

Alternately, as will be discussed further infra, MEDLEY is clearly the dominant term 

of GOURMET MEDLEY® since term GOURMET merely modifies MEDLEYTM 

and MEDLEYTM is printed considerably larger than GOURMET on the product 

labels and other media. 

Mastronardi has used the GOURMET MEDLEY® / MEDLEYTM mark(s) 

continuously for more than five years - since August 2009 - in connection with the 

sale of multicolored, cocktail tomatoes. Therefore, secondary meaning can, and 

should, be presumed. 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 26 of 37 Pg ID 61
16 

 

c. Mastronardi and the GOURMET MEDLEY® / MEDLEYTM 

Brands Are Market Leaders 

Mastronardi and its affiliates are one of the largest, if not the largest, fresh 

vegetable greenhouse operations in North America. And substantial sales of 

GOURMET MEDLEY® / MEDLEYTM tomatoes reflect its standing in the 

marketplace. Since 2009 GOURMET MEDLEY® / MEDLEYTM tomatoes have 

been sold in or through more than 250 stores and chains. And between 2009 and 

2014 Mastronardi’s sales of GOURMET MEDLEY® / MEDLEYTM multicolored, 

cocktail tomatoes exceeded $50 million dollars. Therefore, by any estimate 

Mastronardi has sold millions of containers of GOURMET MEDLEY® / 

MEDLEYTM tomatoes. Other courts in this District have found secondary meaning 

under similar circumstances. See App. 6 - Hershey Co. v. Art Van Furniture, Inc., 

2008 U.S. Dist. LEXIS 87509, *36 (E.D. Mich. Oct. 24, 2008)(“Plaintiff is one of 

the largest producers of chocolate and confectionery goods, its products are sold 

around the world and it spends tens of millions of dollars annually to maintain and 

promote its products. Plaintiff is also protective of its brands and holds hundreds of 

trademarks, although none specifically covers the trade dress at issue here. These 

factors, combined with the iconic status of the classic Hershey's bar, prove that 

Plaintiff's mark is both famous and distinctive.”). Mastronardi’s sales of 

GOURMET MEDLEY® / MEDLEYTM are not just substantial, they are market 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 27 of 37 Pg ID 62
17 

 

leading and strongly support a conclusion that the marks have acquired secondary 

meaning. 

d. Lakeside Knew About, and Copied, Mastronardi’s Marks 

Mastronardi and Lakeside are direct competitors with headquarters located 

five miles apart. Mastronardi’s GOURMET MEDLEY® / MEDLEYTM product had 

been in the marketplace for years prior to the appearance of Lakeside’s MEDLEY’S. 

The goods are in the exact same product category - cocktail fresh tomatoes. The 

clear plastic clamshell packaging is exactly the same. The Costco SKU for the 

products is the same. Mastronardi and Lakeside products are literally sold side-byside in the same stores. Lakeside and Mastronardi packaged cocktail tomato products 

have also been known to be comingled with each other’s products and respective 

boxes when sold side-by-side. These circumstances lead to one conclusion; 

Lakeside knew about Mastronardi’s product and Lakeside copied its product and 

product name from Mastronardi. 

Copying is evidence of secondary meaning, and it is well established that 

“...the use of a contested mark with knowledge of the protected mark at issue can 

support a finding of intentional copying.” See Daddy's Junky Music Stores, Inc. v. 

Big Daddy's Family Music Ctr., 109 F.3d 275, 286 (6th Cir. 1997). 

Here, copying by Lakeside’s of Mastronardi’s GOURMET MEDLEY® / 

MEDLEYTM brand can be easily inferred by the available circumstantial evidence. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 28 of 37 Pg ID 63
18 

 

Lakeside is not a newcomer to the industry and so it simply is beyond belief that it 

would just launch a product, for sale to a market giant like Costco, absent knowledge 

that its direct next door competitor had for years been selling a cocktail type tomato 

virtually identical in appearance under the same name. Lakeside must have known 

about GOURMET MEDLEY® / MEDLEYTM tomatoes, but chose to adopt the 

MEDLEY’S name in spite of that knowledge. 

Therefore, based on all the above, the long use, the extensive sales and 

distribution, and the inference of prior knowledge and copying, the Court should 

hold that GOURMET MEDLEY® / MEDLEYTM are strong and protectable marks.

3. Relatedness of the Goods

This factor is open and shut. The goods are virtually identical. Mastronardi 

and Lakeside are each selling multicolored cocktail tomatoes in 2lb clear plastic 

clamshell packaging. In fact, when stacked on top of each other, the product on the 

bottom of the stack is indistinguishable from the product on the top. 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 29 of 37 Pg ID 64
19 

 

4. Similarity of the Marks 

The dominant portions of each mark are virtually identical. In fact, the only 

real difference between the marks is that Lakeside does not use the term 

GOURMET. 

As the Court explained in Midwest Guar. Bank v. Guar. Bank, 270 F. Supp. 

2d 900 (E.D. Mich. 2003): 

Similarity of the marks "is a factor of considerable weight." The analysis 

involves more than a side-by-side comparison of the service marks. The 

relevant inquiry is whether a particular trademark, when viewed alone, would 

lead to uncertainty about the goods or services that it identifies, accounting 

for the possibility that sufficiently similar marks may confuse consumers who 

do not have both marks before them but who may have a general, vague, or 

even hazy, impression or recollection of the other party's mark. The Court 

must view the marks in their entirely and focus on their overall impressions, 

not their individual features. A proper analysis involves examining the 

pronunciation, appearance, and verbal translation of the conflicting marks. 

See Midwest Guar. Bank, 270 F. Supp. 2d at 915. (Citations omitted). 

Lakeside’s MEDLEY’S completely incorporated the dominant MEDLEY 

term from Mastronardi’s mark. It is a well-established tenant of trademark law that 

"if one word or feature of a composite trademark is the salient portion of the mark, 

it may be given greater weight than the surrounding elements." App. 7 - Citizens 

Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325, *9 

(E.D. Mich. Dec. 3, 2007)(quoting Meridian Mut. Ins. Co. v. Meridian Ins. Group, 

Inc., 128 F.3d 1111, 1115 (7th Cir. 1997)). Moreover, “[w]here the proposed mark 

consists of but two words, one of which is disclaimed, the word not disclaimed is 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 30 of 37 Pg ID 65
20 

 

generally regarded as the dominant or critical term in determining the distinctiveness 

or suggestiveness of the proposed mark. See Pizzeria Uno Corp. v. Temple, 747 F.2d 

1522, 1529-1530 (4th Cir. 1984)(citing American Throwing Co. v. Famous Bathrobe 

Co., 250 F.2d 377, 382 (CCPA 1957)).

Mastronardi contends here that MEDLEY is its own mark, based on fact that 

the term is highlighted on the product label and in other materials merits. 

Alternately, MEDLEY is clearly the dominant term of GOURMET MEDLEY® 

since term GOURMET merely modifies MEDLEY and MEDLEY is printed 

considerably larger than GOURMET on the product labels and other media. 

GOURMET was also the only disclaimed term in the ‘675 Registration, which by 

default rendered MEDLEY the dominant term. 

A second a well-established tenant is that “[w]hen marks would appear on 

virtually identical goods or services, the degree of similarity necessary to support a 

conclusion of likely confusion declines." See Century 21 Real Estate Corp. v. 

Century Life of America, 970 F.2d 874, 877 (Fed. Cir. 1992); See also Wynn Oil Co. 

v. Thomas, 839 F.2d 1183, 1190-1191 (6th Cir. 1988)(“Obviously, since both marks 

use absolutely identical language to sell a nearly identical service, the likelihood of 

confusion must be considered great.”). The goods here are virtually identical, which 

means a lower degree of similarity necessary to support confusion. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 31 of 37 Pg ID 66
21 

 

Lakeside’s mark is legally highly similar, if not identical to Mastronardi’s 

mark. The goods are virtually identical and MEDLEY’S merely adds the apostrophe 

S to Mastronardi’s dominant MEDLEY and drops the term “GOURMET”. This 

factor weighs strongly in favor of Mastronardi. 

5. Evidence of Actual Confusion 

There is no evidence in Mastronardi’s possession, at present, of actual 

confusion. But the Court has recognized that “... a lack of such evidence is rarely 

significant because of the difficulty of securing such evidence.” Midwest Guar. 

Bank v. Guar. Bank, 270 F. Supp. 2d at 916-917. Therefore, the absence of such 

evidence should not weigh against Mastronardi. 

6. Marketing Channels Utilized 

This factor is also open and shut. The marketing channels used by Mastronardi 

and Lakeside to sell the products are exactly the same (e.g,. Costco) . 

This factor ‘consists of considerations of how and to whom the respective 

goods or services of the parties are sold.’ This requires an analysis of the 

parties' predominant customers and their marketing approaches. 

Midwest Guar. Bank, 270 F. Supp. 2d at 921-922 (citations omitted). 

The goods at issue have been found on sale together to the same customers, 

in the same store, physically stacked on top of each other – and at times, comingled. 

Both entities also have an Internet presence. Therefore, this factor favors 

Mastronardi. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 32 of 37 Pg ID 67
22 

 

7. Degree of Customer Care and Sophistication 

This too is an open and shut factor favoring Mastronardi. The customer care 

and sophistication required in this case is no higher than a typical member of the 

general public exercising ordinary caution to purchase produce. 

Generally, in assessing the likelihood of confusion to the public, the standard 

used by the courts is the typical buyer exercising ordinary caution. However, 

when a buyer has expertise or is otherwise more sophisticated with respect to 

the purchase of the services at issue, a higher standard is proper. Similarly, 

when services are expensive or unusual, the buyer can be expected to exercise 

greater care in her purchases. When services are sold to such buyers, other 

things being equal, there is less likelihood of confusion. 

Midwest Guar. Bank, 270 F. Supp. 2d at 922 (citations omitted). 

Costco, at least, considers the Lakeside and Mastronardi tomatoes 

interchangeable – they have the exact same SKU and the exact same price. 

Therefore, the typical consumer has no reason to exercise anything other than 

ordinary care when making a purchase. 

8. Lakeside’s Intent in Selecting its Mark 

As mentioned above, it would be beyond belief that Lakeside started selling 

its MEDLEYTM product to Costco – the market giant where it regularly competes 

side-by-side with Mastronardi – absent any awareness of Mastronardi’s GOURMET 

MEDLEY® / MEDLEYTM product. The goods are virtually identical and are in the 

exact same product category. The Costco SKU is the same. The clear plastic 

clamshell packaging is exactly the same. Lakeside must have known about 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 33 of 37 Pg ID 68
23 

 

Mastronardi’s product. In fact, Lakeside likely deliberately selected the name 

MEDLEY’S to compete head-to-head with Mastronardi. 

B. Irreparable Injury Follows from the Showing of A Likelihood of 

Confusion 

 Irreparable injury and harm to Mastronardi should be presumed to “ordinarily 

follow” from Lakeside’s conduct. “The Sixth Circuit has recognized that ‘irreparable 

injury ordinarily follows when a likelihood of confusion or possible risk to 

reputation appears from infringement or unfair competition.’” App. 3 - Innovation 

Ventures, LLC v. N2G Distrib., 2008 U.S. Dist. LEXIS 30047, 19-20 (E.D. Mich. 

Apr. 14, 2008)(citing Lorillard Tobacco Co. v. Amouri's Grand Foods, Inc., 453 

F.3d 377, 382 (6th Cir. 2006)); see also App. 8 - Innovation Ventures, LLC v. Body 

Dynamics, Inc., 2009 U.S. Dist. LEXIS 26535, *9-10 (E.D. Mich. Mar. 30, 

2009)(“Moreover, in decisions that post-date eBay, the Sixth Circuit has continued 

to recognize a presumption of irreparable harm in trademark cases where a 

‘likelihood of confusion or possible risk to reputation appears from infringement or 

unfair competition.’”). 

Mastronardi has shown, supra, that its GOURMET MEDLEY® / 

MEDLEYTM mark(s) is strong, the goods and conditions of sale of the goods are 

virtually identical, and that confusion is likely to result between Mastronardi’s brand 

and Lakeside’ MEDLEY’S brand if Lakeside is permitted to continue selling. 

Irreparable harm should be presumed. 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 34 of 37 Pg ID 69
24 

 

C. Harm to the Public May Result If An Injunction is Not Granted 

 Not granting an injunction is likely to result in customers thinking they have 

purchased Mastronardi’s product, when in fact they purchased Lakeside’s. 

However, if an injunction is granted consumers would obviously still have access to 

cocktail tomatoes sold by Mastronardi, other third party vendors, and even Lakeside 

– provided Lakeside drops MEDLEY’S. 

D. The Public Has An Interest In Not Being Confused Concerning the 

Source of Food

“The public interest is served by protecting one's trademark rights and 

avoiding confusion in the marketplace.” Midwest Guar. Bank, 270 F. Supp. 2d at 

924. Mastronardi has a protectable trademark right in the use of the GOURMET 

MEDLEY® / MEDLEYTM marks in connection with multicolored cocktail 

tomatoes. Lakeside introduced a likelihood of confusion into the marketplace when 

it launched its own package of multicolored cocktail tomatoes and chose to call that 

product MEDLEY’S. The public interest protecting marks, and indeed the public 

health interest in avoiding confusion concerning the source of food, favors the grant 

of an injunction against further use of MEDLEY’S by Lakeside. 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 35 of 37 Pg ID 70
25 

 

CONCLUSION 

In view of the all the above facts and arguments, Mastronardi requests that the 

motion be GRANTED. 

Respectfully submitted, 

s/ Mark D. Schneider (P55253) 

GIFFORD, KRASS, SPRINKLE, 

ANDERSON & CITKOWSKI, P.C. 

2701 Troy Center Drive, Suite 330 

Troy, Michigan 48084 

(248)647-6000 

(248)647-5210 (Fax) 

litigation@patlaw.com 

s/ David E. Einstandig (P47344) 

THAV GROSS, PC 

30150 Telepgraph Road, Suite 444 

Bingham Farms, Michigan 48025 

(248) 645-8232 

(248) 220-1410 (Fax) 

deinstandig@thavgross.com 

Attorneys for Plaintiff 

Dated: August 7, 2015 

 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 36 of 37 Pg ID 71
26 

 

CERTIFICATE OF SERVICE 

 I certify that on August 7, 2015, the foregoing Motion for Preliminary 

Injunction and Brief in Support of Motion for Preliminary Injunction was served 

upon the following individuals via Federal Express: 

Douglas R. Wolf 

Wolf, Greenfield & Sacks, P.C. 

600 Atlantic Avenue 

Boston, MA 02210-2206 

Lakeside Produce, Inc. 

132 Elliott Street 

Leamington, Ontario 

N8H 1A4 

CANADA 

______________________________ 

Debra Nichols 

2:15-cv-12331-PDB-EAS Doc # 6 Filed 08/07/15 Pg 37 of 37 Pg ID 72