The Wisconsin story of Kerrygold butter churns on as Wisconsinites may be forestalled for a little longer in achieving Irish butter satisfaction. Last week Ornua Foods, which controls the rights to the Kerrygold brand in the U.S. brought an action against the Wisconsin-based Old World Creamery, alleging it had been in discussions with Old World to package Ornua’s Kerrygold butter in the state to allow Kerrygold to be sold in Wisconsin. You can read our previous post about the battle for Kerrygold in the state here. You can read the complaint here.
Kerrygold asserted in the complaint that Old World broke off discussions and developed a competing irish butter product under the name Irishgold seeking to capitalize on the dearth of Irish butter in the state in packaging and with a name confusingly similar enough to Kerrygold to be a Lanham Act violation. In case you’re interested, the packaging looked like this:
Last Friday, the court held a hearing and entered a temporary restraining order prohibiting the defendants from using the Irishgold marks and packaging seen above and setting the matter over for a full preliminary injunction hearing. You can read the short order here. This is a blow to Irishgold. As reflected in the minutes from the TRO hearing (here) the defendants claimed that they had only ceased discussions over Kerrygold after they would not stop grading and packaging another Irish butter that is a Kerrygold competitor – Waterford Irish Butter. According to court filings, over 40,000 pounds of Irish butter under the Irishgold name had already been shipped to Wisconsin stores in anticipation of a launch date around April 11. Given that the Irishgold product was allegedly already on shelves in stores in Wisconsin, the court noted that the parties would need to “deal” with those products themselves, despite the assertions from the defendants that a TRO would force them to pull products from the store shelves at a cost of approximately $20,000. Interestingly, the evidence of confusion between the Irishgold product and Kerrygold included news articles and comments made on twitter that rightfully cited the product Old World Creamery was dicsussing as “Irishgold” and then went on to assume and correct that name as “Kerrygold” – you can read those posts and articles which were attached to an exhibit attesting to confusion here.
This is a curious result given that the Irishgold mark had been registered by a different party back in 2006 for “butter” and “dairy products” without any apparent opposition in the USPTO’s files from Kerrygold.