United States Court of Appeals

for the Fifth Circuit

No. 20-30418

Dennis Perry, 

Plaintiff—Appellant,

versus

H. J. Heinz Company Brands, L.L.C.; Kraft Heinz Foods 

Company, 

Defendants—Appellees.

Appeal from the United States District Court 

for the Eastern District of Louisiana

USDC No. 2:19-CV-280

 

Before Owen, Chief Judge, and Graves and Ho, Circuit Judges.

James E. Graves, Jr., Circuit Judge:

Mr. Dennis Perry makes Metchup, which depending on the batch is a 

blend of either Walmart-brand mayonnaise and ketchup or Walmart-brand 

mustard and ketchup. Mr. Perry sells Metchup exclusively from the lobby of 

a nine-room motel adjacent to his used-car dealership in Lacombe, Louisiana. 

He has registered Metchup as an incontestable trademark. Though he had 

big plans for Metchup, sales have been slow. Since 2010, Mr. Perry has

produced only 50 to 60 bottles of Metchup, which resulted in sales of around

$170 and profits of around $50. He owns www.metchup.com but has never 

United States Court of Appeals

Fifth Circuit

FILED

April 12, 2021

Lyle W. Cayce

Clerk

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No. 20-30418

2

sold Metchup online. For better or worse, the market is not covered in 

Metchup. 

Along comes Heinz. It makes Mayochup, which is solely a blend of 

mayonnaise and ketchup. To promote Mayochup’s United States launch,

Heinz held an online naming contest where fans proposed names. A fan 

submitted Metchup, and Heinz posted a mock-up bottle bearing the name 

Metchup on its website alongside mock-up bottles for the other proposed 

names. Heinz never sold a product labeled Metchup. 

When Mr. Perry discovered Mayochup and Heinz’s use of Metchup 

in advertising, he sued Heinz for trademark infringement. The district court 

dismissed Mr. Perry’s claims because it found that there was no likelihood of 

confusion between Mayochup and Metchup and no confusion caused by 

Heinz’s fleeting use of Metchup in advertising. It also canceled Mr. Perry’s 

trademark registration after concluding that he had failed to prove that he had 

made lawful, non-de minimis use of the Metchup mark in commerce. 

We agree that there is little chance that a consumer would confuse Mr. 

Perry’s Metchup with Heinz’s Mayochup or be confused by Heinz’s use of 

Metchup in advertising, so we affirm the district court’s dismissal of Mr. 

Perry’s claims against Heinz. But because 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. 

Consequently, we vacate the district court’s cancelation of Mr. Perry’s 

trademark and remand for further proceedings on Heinz’s counterclaim. 

I.

Heinz began selling Mayochup in the Middle East in 2016. It decided 

to bring this convenient, yet perhaps gratuitous, mixture to the United States

in 2018. To promote its blends of ketchup and ranch (“Kranch”), 

mayonnaise and mustard (“Mayomust”), mayonnaise and barbecue sauce 

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(“Mayocue”), and mayonnaise and ketchup, it staged a publicity stunt. To 

get customers used to the uncanny sauce blends, Heinz turned to the Internet 

and asked its fans to propose names for its concoctions. 

The promotion was a hit. Heinz received over ninety proposed names 

for its mayonnaise and ketchup blend, including Saucy McSauceface, an 

apparent nod to Boaty McBoatface, the name the Internet proposed for a

British research ship.

1 But the submissions were not all so fanciful and 

included more suggestive names like Metchup. At the end of 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. 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. 

Mr. Perry, who operates the nine-room Star Hotel and an adjoining 

used-car lot in Lacombe, Louisiana, had years ago decided to solve these 

issues and share his love of mayonnaise blended with ketchup (and 

occasionally mustard) with others. Mr. Perry says he first had the idea to 

make a blended sauce called Metchup sometime in 2000. But it took a while 

for him to get around to producing it. 

In addition to used car sales and motel management, he “dabbled in” 

the buying and selling of domain names. At one time, he owned as many as 

1,400 domain names that he hoped to sell for a profit. In 2007, Mr. Perry 

purchased the domain names for www.metchup.com and 

1 Katie Rogers, Boaty McBoatface: What You Get When You Let the Internet Decide, N.Y. 

Times, March 21, 2016, https://www.nytimes.com/2016/03/22/world/europe/boatymcboatface-what-you-get-when-you-let-the-internet-decide.html.

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www.metchup.uk.co and applied to register Metchup as a trademark with the 

United States Patent and Trademark Office. 

Mr. Perry began making Metchup for public consumption sometime 

in 2010 or 2011. He made it by blending Walmart-brand mayonnaise and 

ketchup together in his home kitchen, funneling the small batches into plastic 

bottles, and labeling them with a printed label. He sold the first bottle of 

Metchup to his mother and put the rest up for sale in the lobby of the Star 

Motel. 

Sales in hand, Mr. Perry submitted a photograph to the PTO, which 

then issued him a trademark registration for the name Metchup in 2011. He 

renewed the trademark registration in 2017 (submitting the same photo he 

submitted in his first application), and the PTO declared the mark 

incontestable in 2018. 

Mr. Perry had high hopes for Metchup, writing in one notebook that 

he wanted to sell two million bottles, but Metchup was neither an online 

sensation nor a brick-and-mortar success. Over the years, Mr. Perry has sold 

only small quantities of Metchup exclusively at the Star Motel. Though Mr. 

Perry sold Metchup to motel guests traveling through “from all over the 

place,” he has only thirty-four documented sales. And while he insists he sold 

a few more bottles than that, any dispute over sales figures is immaterial

because he has made at most nine or ten six-bottle batches of Metchup. He 

thought about contacting a bottle producer to expand his operation but never 

did. 

While Mr. Perry owned metchup.com, he never sold Metchup online. 

The domain name linked to a Facebook page with pictures of Metchup 

bottles on it, but there was no way to purchase Metchup through the page 

and no clear indication that Metchup was actually for sale. There were so few 

signs that a product called Metchup was for sale that one could see how 

Heinz’s in-house trademark research team found Mr. Perry’s registration but 

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concluded that the trademark was not in use. The markets were not exactly

covered in Metchup.

After the naming contest and the mock-up Metchup bottle, Heinz 

released Mayochup for sale in the United States. Mr. Perry’s son-in-law 

discovered Mayochup at the grocery and let Mr. Perry know. Mr. Perry then 

went online and discovered that not only had Heinz released its own 

mayonnaise and ketchup blend but that it had also used the name Metchup 

in its promotional efforts. 

Mr. Perry hired a lawyer and sued Heinz for trademark infringement, 

trademark counterfeiting, false designation of origin, and for violations of 

various Louisiana trademark laws. Heinz filed a counterclaim to have Mr. 

Perry’s Metchup trademark registration canceled for abandonment or nonuse. 

After speaking with counsel, Mr. Perry sent samples of Metchup to 

national grocery chains in Florida and a store in New Orleans in hopes of 

expanding Metchup’s market footprint. But Mr. Perry never heard anything 

back. His lawsuit against Heinz fared no better than his expansion efforts. 

After discovery, Heinz filed a motion for summary judgment. The district 

court granted the motion in full and dismissed all of Mr. Perry’s claims and 

canceled his trademark registration for Metchup because it deemed the 

trademark abandoned. 

II.

The panel reviews the grant of summary judgment de novo. Xtreme 

Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009). All of 

Mr. Perry’s claims require him to show ownership of a valid trademark and 

that Heinz used the mark or a similar mark in a way that created a likelihood 

of confusion. Id. at 226–27; 15 U.S.C. §§ 1114(1)(a)-(b), 1116(d), 1117; 

1125(a); La. Rev. Stat. § 51:222, 222.1. 

Under the Lanham Act, Mr. Perry’s certificate of registration for his 

Metchup trademark is prima facie evidence of its validity. 

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15 U.S.C. §§ 1057(b), 1115(a). The PTO found that Mr. Perry’s Metchup 

mark had achieved incontestable status because it had been registered and 

used in commerce for over five years. 15 U.S.C. § 1065; see also American Rice, 

Inc. v. Prod. Rice Mill, Inc., 518 F.3d 321, 330 (5th Cir. 2008). Once a mark 

becomes incontestable, its federal registration constitutes conclusive evidence 

of its validity, subject only to the defenses enumerated in section 1115 of the 

Lanham Act, which includes the defense of abandonment. 15 U.S.C. § 

1115(a); § 1115(b)(2), § 1065(4) (emphasis added). See also American Rice, 518 

F.3d at 330.

Mr. Perry has conclusive evidence that he owns a valid trademark and 

has shown that Heinz has used both the Metchup trademark and the 

Mayochup name in commerce. Heinz after all used the Metchup mark in 

conjunction with its advertising campaign and sells Mayochup, an ostensibly 

similar product, in groceries nationwide. So we set the issues of ownership, 

use, and abandonment aside for a moment to first address whether Heinz

used the Metchup trademark and Mayochup name in a way that likely 

confused consumers as to the source, sponsorship, or affiliation of the 

blended sauces at issue. Xtreme Lashes, 576 F.3d at 226. “Likelihood of 

confusion” requires more than a mere possibility; Mr. Perry must show a 

probability of confusion. Id.

When deciding whether the use was confusing, courts rely on a nonexhaustive set of factors called digits of confusion, which include: (1) the type 

of trademark, (2) mark similarity, (3) product similarity, (4) outlet and 

purchaser identity, (5) advertising media identity, (6) defendant’s intent, (7) 

care exercised by potential purchasers, and (8) actual confusion. Id. at 227. 

A few factors weigh in Mr. Perry’s favor. Setting aside production 

methods, the products are similar. Selling for around $5.00 per bottle, both 

are inexpensive. The lowprice perhaps suggests that potential purchasers are 

less likely to exercise care when buying. But then again, people are discerning 

with regard to condiments and resolute in their preferences (e.g., Heinz 

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ketchup versus Hunt’s ketchup). Lastly, Heinz used the exact word Metchup 

on a mock-up bottle in online advertising. 

But trademarked words cannot be isolated from the labels on which 

they appear, and these labels and bottles look nothing alike.

Sun-Maid Raisin Growers of Cal v. Sunaid Food Prods., Inc., 356 F.2d 467, 469 

(5th Cir. 1966); see also Future Proof Brands, L.L.C. v. Molson Coors Beverage 

Co., 982 F.3d 280, 287–88 (5th Cir. 2020) (noting differences in packaging).

The products’ distinguishable packaging mitigates against Heinz’s use of the 

word Metchup because the packaging differences make confusion less likely.

The type of mark weighs in Heinz’s favor. Trademarks are evaluated 

on a spectrum. Descriptive and suggestive marks are considered weaker than 

marks that are arbitrary and fanciful, which are marks that bear almost no 

relationship to the products to which they are applied (e.g., Saucy 

McSauceface). Future Proof Brands, 982 F.3d at 289–292 (comparing types 

of trademarks). Metchup is a suggestive trademark because while it requires 

a little imagination to draw a conclusion about the goods, the mash-up of a 

name relates to the names of the two sauces that form the blend. See id. at 

291. 

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Both Mr. Perry and Heinz are selling to potential condiment 

purchasers. But they have to date targeted different segments of this market. 

Mr. Perry has limited his sales efforts to the travelersstaying at his nine-room 

motel in Lacombe, Louisiana, and to visitors to his used car lot. The small 

motel and the adjoining used car lot are not the first place condiment 

purchasers go for ketchup and mayonnaise in any form. Moreover, Mr. Perry 

has neither sold Metchup online nor shipped orders of Metchup. He has 

made only minimal efforts to expand his distribution. And when he did 

attempt to expand, his efforts involved, not approaching local restaurants, 

stores, or farmer’s markets, but sending unsolicited samples to national 

grocery chains in Florida and a hot sauce store in New Orleans. 

Mr. Perry markets his products to the guests at his nine-room motel, 

Heinz to the shoppers at most every grocery and to online customersthrough 

an extensive web store. Sensibly speaking, Mr. Perry has no presence in 

Heinz’s market and Heinz no presence in his. This is not to say that Mr. 

Perry would not have trademark rights should he choose to expand. It is, 

however, saying that as the products were situated at the time Heinz used the 

name Metchup on a mock-up label, and as Heinz’s Mayochup currently 

stands in relationship to Mr. Perry’s Metchup, there was, and is, no market 

overlap. 

Mr. Perry does not buy print ads, issue coupons, enter his sauce into 

contests, or advertise Metchup on signage. Mr. Perry, however, contends 

that both he and Heinz marketed their products on the Internet. True, but 

Mr. Perry’s online presence was limited to a Facebook page with pictures of 

Metchup bottles on it. Unlike Heinz, he has never used the Internet for sales 

or large-scale advertising. While Heinz knew Mr. Perry had registered the 

Metchup mark, the lack of advertising and established market goodwill makes 

it easy to see how it concluded that the mark was no longer in use. So, the 

digits of outlet and purchaser identity, advertising media identity, and 

defendant’s intent all weigh in favor of Heinz. 

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Finally, there is the question of actual confusion. While it need not be 

proven, actual confusion is “the best evidence of a likelihood of confusion.” 

Xtreme Lashes, 576 F.3d at 229. The district court relied almost exclusively 

on the lack of actual confusion when it dismissed Mr. Perry’s claims. Indeed, 

nothing in the record shows that any consumer actually got confused by 

Heinz’s use of Metchup on a mock-up bottle or confused Heinz’s Mayochup 

with Mr. Perry’s Metchup. After all, Heinz never sold a product named 

Metchup and there is no evidence that Heinz’s Mayochup and Mr. Perry’s 

Metchup have ever competed for sales. 

Mr. Perry introduced expert testimony from Dr. Lucy L. Henke, a 

marketing professor with a doctorate in communication studies. She said that 

the typical consumer would confuse Mayochup and Metchup due to visual 

and auditory similarities between the two names. Dr. Henke pointed out that 

the words only differ by three letters and noted that Twitter users asked 

Heinz about the pronunciation of Mayochup, “Is it pronounced May-o-chup 

or Metchup?”

But asking questions about pronunciation does not show that the 

Twitter users were actually confusing Heinz’s Mayochup with Mr. Perry’s 

Metchup. Confusion about how to pronounce the product’s name does not 

show actual confusion as to its source, sponsorship, or affiliation. 

More importantly, Dr. Henke neither presented consumer survey 

data nor provided an analysis of such data. Her testimony amounts to her 

personal opinion on the topic of actual confusion and does not address 

evidence where potential consumers were asked to offer their opinions or 

tested to see if they actually got, or were, confused by either Heinz’s use of 

the name Metchup in advertising or by it selling Mayochup. Thus, Dr. 

Henke’s testimony provides no evidence of actual confusion. 

“Incontestable status does not make a weak mark strong.” Oreck Corp. 

v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986). Mr. Perry’s 

incontestable mark means that he has rights to use the mark nationwide, but 

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it does not automatically mean that another’s use of the mark constitutes 

infringement. This is not a strict liability situation, and in the end, Mr. 

Perry’s Metchup mark is simply too weak for there to be a likelihood of 

confusion on these facts. 

It would be a coincidence to ever encounter both Mayochup and 

Metchup in the market, much less get confused about the affiliation, 

sponsorship, or origin of the two products. Accordingly, no reasonable jury 

could conclude that Heinz’s use of Metchup in advertising or the sale of its 

own product, Mayochup, created a likelihood of confusion. We therefore

affirm the district court’s decision to dismiss Mr. Perry’s claims against 

Heinz. 

III.

While the lack of a probability of confusion spoils all of Mr. Perry’s 

claims, it does not have the same ruinous effect on Mr. Perry’s ownership of 

the Metchup trademark. The district court granted summary judgement on 

Heinz’s counterclaim for trademark cancelation because it found that Mr. 

Perry had, as a matter of law, abandoned his incontestable trademark for 

Metchup. 

Abandonment may be a defense even against a party possessing an 

incontestable mark. 15 U.S.C. § 1115(b)(2). But a party claiming that a

trademark has been intentionally abandoned bears a heavy burden. Kentucky 

Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 387 (5th Cir.

1977) (citing American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619, 625 (5th 

Cir. 1963)). “Abandonment is in the nature of a forfeiture” and requires 

satisfying the “burden of strict proof applicable in forfeiture cases.”

American Foods, 312 F.2d at 624–25. Courts have equated the requirement 

for strict proof to the burden of providing clear and convincing evidence. 3 J. 

Thomas McCarthy, McCarthy on Trademarks and 

Unfair Competition § 17:12 (5th ed. 2021).

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The Lanham Act provides that “[a] mark shall be deemed to be 

‘abandoned’ . . . [w]hen its use has been discontinued with intent not to 

resume such use. Intent not to resume may be inferred from the

circumstances. Nonuse for 3 consecutive years shall be prima facie evidence 

of abandonment.” 15 U.S.C. § 1127; see also Exxon Corp. v. Oxxford Clothes, 

Inc., 109 F.3d 1070, 1078–79 (5th Cir. 1997). “Use” for purposes of the 

Lanham Act equates to “use in commerce.” See 15 U.S.C. § 1127. The act 

further defines “use” as “the bona fide use of such mark made in the 

ordinary course of trade, and not made merely to reserve a right in a 

mark.” Id. Section 1127 appears to impose two requirements—use in 

commerce and bona fide use or use not merely to reserve a right.

The district court first found that Mr. Perry had abandoned his 

trademark because “[he] [ ] failed to produce any evidence to show any sales 

of METCHUP-branded products outside of Louisiana or to non-Louisiana 

residents.” But this conclusion that Mr. Perry never used his mark in 

commerce because he cannot prove sales outside of Louisiana conflicts with 

recent Commerce Clause jurisprudence and misplaces the burden of proof. 

“Because one need not direct goods across state lines for Congress to 

regulate the activity under the Commerce Clause, there is likewise no such 

per se condition for satisfying the Lanham Act’s ‘use in commerce’ 

requirement.” Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 

995 (Fed. Cir. 2016). In Christian Faith Fellowship, the Trademark Trial and 

Appeal Board concluded that two sales totaling $38 to two out-of-state 

residents were de minimis and therefore not sales in commerce. Id. at 987–88. 

The Federal Circuit overturned the decision. Id. A brief study of modern 

Commerce Clause cases reveals that seemingly de minimis intrastate 

activities can influence interstate commerce, be regulated by Congress, and 

thus count as uses in commerce for purposes of the Lanham Act. See id. at 

991–92 (citing Gonzales v. Raich, 545 U.S. 1, 6–8 (2005)). 

But what may be most concerning is that the district court misplaced 

the burden of proof. Mr. Perry testified that he sold Metchup to motel guests 

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who come from “all over the place.” Heinz has the burden to prove 

otherwise by presenting strict proof, and it has neither put forth evidence that 

discredits Mr. Perry’s testimony nor has it shown why the reasoning from 

Christian Faith Fellowship would fail to apply here.

The district court’s flawed use-in-commerce reasoning and the 

misplacement of the burden of proof are not the only obstacles preventing us 

from affirming its grant of summary judgment on Heinz’s counterclaim. The 

district court also reasoned that Mr. Perry had failed to make “lawful, nonde minimis use” of the Metchup mark. Heinz insists that Mr. Perry’s use was 

unlawful because he failed to comply with state and federal food labelling 

regulations when he omitted required information from the Metchup labels. 

But this court has not adopted the unlawful use doctrine—the doctrine that 

failing to abide by all laws and regulations can turn what would otherwise 

constitute “use” into “non-use.” See FN Herstal SA v. Clyde Armory Inc., 

838 F.3d 1071, 1086–88 (11th Cir. 2016) (discussing the history and 

application of the unlawful use doctrine); see also 3 J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair 

Competition § 17:12 (5th ed. 2021). We see no reason to adopt the 

doctrine here.

Abandonment generally requires a complete discontinuance of the 

trademark’s use and even minor or sporadic good faith uses of a mark will 

defeat the defense of abandonment. Electro Source, LLC v. Brandess–Kalt–

Aetna Group, Inc., 458 F.3d 931, 938 (9th Cir. 2006) (“Even a single instance 

of use is sufficient against a claim of abandonment of a mark if such use is 

made in good faith.”) (internal citation omitted). See also NetJets Inc. v. 

IntelliJet Grp., LLC, 602 F. App’x 242, 245–46 (6th Cir. 2015) (concluding 

that reasonable jury could find two sales of software license bona fide use); 

Cumulus Media, Inc. v. Clear Channel Communs., Inc., 304 F.3d 1167, 1173–74 

(11th Cir. 2002) (“[E]vidence of [the owner’s] use of [the mark] . . . was 

limited, consisting largely of a logo on a billboard, some business cards, and a 

few promotional materials, but it was sufficient to enable the trial court to 

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reject [the defendant’s] abandonment defense.”). But see Emergency One, Inc. 

v. American FireEagle, Ltd., 228 F.3d 531 (4th Cir. 2000) (“One recycled 

American Eagle truck with an AMERICAN EAGLE nameplate over the 

course of three years is no more than token use which, standing alone, is 

legally insufficient to disprove abandonment.”).

Heinz cannot show that Mr. Perry abandoned the mark due to 

complete nonuse. True, Mr. Perry neither sold (only 34 documented sales) 

nor made (only 60 bottles produced) much Metchup. And we did find in

Exxon Corp. v. Humble Exploration Co., Inc., 965 F.2d 96 (5th Cir. 1983), that 

seemingly similar sporadic and de minimis use could serve as grounds for 

registration cancellation. 

But Humble addressed what could be called de minimis use in the 

context of a trademark maintenance program where Exxon made only token

or sporadic use of its retired Humble Oil name to reserve rights to the 

trademark. 965 F.2d at 99–101. For example, Exxon packaged products 

adorned with both Exxon and Humble labels and shipped the goods to 

customers. Id. Humble built upon an earlier Second Circuit decision where 

the court found that token defensive use was insufficient to obtain 

enforceable rights in a trademark. La Societe Anonyme des Parfums le Galion v. 

Jean Patou, Inc., 495 F.2d 1265, 1273–74 (2d Cir. 1974). In Le Galion, Jean 

Patou had registered a trademark in the United States and sold a small 

amount of perfume under the trademarked name to keep Le Galion from 

selling a competing product. Id. at 1274.

Humble and Le Galion concern behavior that the Lanham Act 

specifically prohibits. In fact, the Seventh Circuit has cabined cases like Le

Galion and Humble to situations involving a trademark maintenance program

or defensive trademark use, implying that de minimis sales and use alone are 

insufficient to show abandonment. See S.C. Johnson & Son, Inc. v. 

Nutraceutical Corp., 835 F.3d 660, 668–70 (7th Cir. 2016). Again, the 

Lanham Act’s framework imposes two requirements—use in commerce and 

bona fide use or use not merely to reserve a right. 

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These requirements have nothing to do with a threshold use or sales 

requirement, nor do they imply that trademark rights, however weak, will 

vanish if sales are slow. In fact, sales are “not the sine qua non of trademark 

use.” Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1267 (5th Cir. 

1975). So, considering the Lanham Act’s requirements and the more 

prevalent view that even minor good-faith use can forestall abandonment, de 

minimis sales and sporadic use alone are not enough to warrant a conclusion 

that Mr. Perry has not made “use” of the mark in a way that qualifies as 

“use” under the Lanham Act. 

That said, Heinz has created an issue of fact as to whether Mr. Perry’s 

use of the Metchup mark was bona fide use or whether he was simply making 

sporadic use of the mark to maintain his trademark rights. Mr. Perry has a 

history of acquiring domain names with no intention of using them and with 

hopes of selling them for a profit. This “domain squatting” is akin to a 

trademark maintenance program. And evidence suggests that Mr. Perry

might have been doing something similar with the Metchup trademark. 

Mr. Perry made next to no effort to grow the sales of Metchup. He

never registered his trademark in Louisiana, never attempted to sell Metchup 

in local stores, restaurants, or farmer’s markets; never attempted to increase 

production or improve packaging; and never attempted to sell the product 

online or advertise where the product could be purchased online. His only 

attempts to get Metchup into stores came when he sent unsolicited samples 

to national groceries and to a store in New Orleans after he found out Heinz 

was selling a similar product and had used the name Metchup in its 

marketing. At the time of his deposition, Mr. Perry had no Metchup on hand. 

Thus a reasonable jury could infer that Mr. Perry’s registration and use of 

the trademark was something other than a sincere, good-faith business effort

and something more like a trap that Heinz unwittingly fell into. 

But if that inference is to be made, it should be made by a finder of fact

because “summary judgment is rarely proper when an issue of intent is 

involved.” Guillory v. DomtarIndus.Inc. v. John DeereCo., 95 F.3d 1320, 1326 

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(5th Cir. 1996). Heinz has a heavy burden, and the absence of definitive proof 

of a trademark maintenance program like the one in Humble requires an 

examination of Mr. Perry’s intent and credibility to determine whether his 

use of the Metchup mark was bona fide use. After all, Mr. Perry had hoped 

to sell millions of bottles and testified that he contemplated expanding

production and improving packaging. Consequently, his efforts could also be 

seen as a foundering business venture rather than a trademark trap. We 

therefore vacate the district court’s grant of summary judgment on Heinz’s 

cancelation counterclaim and remand the case to the district court for further 

proceedings to address whether Mr. Perry made bona fide use of the 

Metchup mark. 

IV.

We AFFIRM in part and VACATE in part and REMAND for 

further proceedings on Heinz’s counterclaim and the issue of abandonment. 

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