IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

BLUE BELL CREAMERIES, L.P. :

:
Plaintiff, :
:
v. : Civil Action No. 4:08-cv-00981
: Judge Nancy F. Atlas
DENALI CO., LLC :
:
Defendant, :
:
DENALI CO., LLC, DENALI FLAVORS, INC. :
:
Counter-Plaintiffs, :
:
v. :
:
BLUE BELL CREAMERIES, L.P. :
:
Counter-Defendant. :

BLUE BELL’S OPPOSITION TO DENALI’S MOTION

FOR PRELIMINARY INJUNCTION
 TABLE OF CONTENTS

I. ISSUES PRESENTED FOR DETERMINATION BY THIS COURT...............................2

II. BACKGROUND AND STATUS OF THE CASE .............................................................2

A. Background -- Blue Bell’s Entry into the “_____ TRACKS” Market ....................2

III. SUMMARY OF ISSUES/ARGUMENT.............................................................................3

A. Denali’s Motion for Preliminary Injunction should be denied ................................3

IV. BACKGROUND FACTS RELEVANT TO THE ISSUE OF LIKELIHOOD OF

CONFUSION.......................................................................................................................4

A. “Tracks” as a Designation for an Ice Cream Flavor, Has De Minimis

Value Due to Third Party Use..................................................................................4

B. Blue Bell’s Registered, Incontestable Mark on MOOO BARS®............................5

C. Blue Bell’s Dairy Cow Tradition.............................................................................6

V. LAW AND ARGUMENT ...................................................................................................7

A. There Is No Likelihood of Confusion Between “MOOO TRACKS” and

“MOOSE TRACKS” as Used in the Marketplace...................................................7

1. Denali’s MOOSE TRACK® Asserted Marks, as used in the

Marketplace, are Not Strong ........................................................................8

(a) Prior Use of “MOO(O) TRACKS” by Others Prevents

Enforcement of MOOSE TRACKS®..............................................9

2. Dissimilarity of Marks in the Context of Usage ........................................10

(a) “MOOO” is a Sound, “MOOSE” is an Animal .............................12

3. Similarity of Products - MOOO TRACKS, MOOSE TRACKS®,

FUDGE TRACKS and BUNNY TRACKS...............................................14

4. Identity of Advertising...............................................................................14

5. While Retail Outlets Are the Same, Shelf Space By Brand Must Be
Considered .................................................................................................14

6. Blue Bell Chose MOOO TRACKS in Good Faith ....................................15

7. Denali’s Evidence of Actual Confusion is De Minimis Even if the

Internet Chatters are Confused – Which They Are Not.............................17

i
 B. Denali Has Failed to Prove Likelihood of Confusion............................................18

C. Denali Must Bear the Burden of Proof of Irreparable Injury.................................18

D. The Public Interest is Not Served by Diminishing Competition ...........................18

VI. CONCLUSION..................................................................................................................19

ii
 TABLE OF AUTHORITIES

FEDERAL CASES

Amstar Corp. v. Domino’s Pizza, Inc.,

615 F.2d 252 (5th Cir. 1980) .............................................................................................11

Armstrong Cork Co. v. World Carpets, Inc.,

597 F.2d 496 (5th Cir. 1979) .............................................................................................14

Asics Corp. v. Target Corp.,

282 F. Supp. 2d 1020 (D.Minn. 2003)...............................................................................22

Atec, Inc. v. Societe National Industrialle Aerospatiale,

798 F. Supp. 411 (S.D.Tex. 1992) .....................................................................................20

Black Dog Tavern Co. v. Hall,

823 F. Supp. 48 (D. Mass. 1998) .......................................................................................15

Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc.,

815 F.2d 500 (8th Cir. 1987) .......................................................................................21, 22

Care First of Maryland, Inc. v. First Care, P.C.,

434 F.3d 263 (4th Cir. 2006) ...........................................................................15, 16, 17, 18

Elvis Presley Enter., Inc. v. Capeve,

141 F.3d 188 (5th Cir. 1998) .......................................................................................10, 13

Evergreen Presbyterian Ministries, Inc. v. Hood,

235 F.3d 908 (5th Cir. 2000) .............................................................................................10

First Sav. Bank, F.S.B. v. First Bank Sys., Inc.,

101 F.3d 645 (10th Cir. 1996) ...........................................................................................11

Harris County v. Carmax Auto Superstores, Inc.,

177 F.3d 306 (5th Cir. 1999) .............................................................................................10

N. Am. Med. Corp. v. Axiom Worldwide, Inc.,

522 F.3d 1211 (11th Cir. 2008) .........................................................................................21

New Century Financial, Inc. v. New Century Financial Corp.,

2005 US DIST LEXIS 41192, 11 ......................................................................................11

Small Business Assistance Corp. v. Clear Channel Broadcasting, Inc.,

210 F.3d 278 (5th Cir. 2000) .............................................................................................13

Sun Banks of Fla., Inc. v. Sun. Fed. Sav. & Loan Ass’n,
651 F.2d 311 (5th Cir. 1981) .......................................................................................11, 12

052680.0041 WEST 6263862 v6 As of July 18, 2008, 3:24 PM 1

Sun-Maid Raisin Growers of California v. Sunaid Food Products, Inc.,
356 F.2d 467 (5th Cir. 1965) .............................................................................................14

Union Nat’l Bank of Texas, Laredo, Texas v. Union Nat’l Bank of Texas, Austin, Texas,
909 F.2d 839 (5th Cir. 1990) .............................................................................................10

Waldmann Lighting Co. v. Halogen Lighting Sys. Inc.,

28 U.S.P.Q. 2d 1682 (N.D.Ill. 1993) .................................................................................22

STATE CASES

Bank of Montreal v. Sunrise Energy Co.,

1994 WL. 240792 (S.D. Tex. March 24, 1994).................................................................10

MyGym, LLC v. Engle,

2006 WL. 3524474 (D.Utah Dec. 6, 2006)........................................................................21

Standard Brands, Inc. v. RJR Foods, Inc.,

192 U.S.P.Q. 383, 1976 WL. 21135 (T.T.A.B. 1976) .......................................................11

STATUTES

15 U.S.C. § 1114..............................................................................................................................4

15 U.S.C. § 1115(b) .........................................................................................................................9

15 U.S.C. § 1125(a) .........................................................................................................................4

15 U.S.C. § 1125(c) .........................................................................................................................5

2
 IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS

BLUE BELL CREAMERIES, L.P. :

:
Plaintiff, :
:
v. : Civil Action No. 4:08-cv-00981
: Judge Nancy F. Atlas
DENALI CO., LLC :
:
Defendant, :
:
DENALI CO., LLC, DENALI FLAVORS, INC. :
:
Counter-Plaintiffs, :
:
v. :
:
BLUE BELL CREAMERIES, L.P. :
:
Counter-Defendant. :

BLUE BELL’S OPPOSITION TO

DENALI’S MOTION FOR PRELIMINARY INJUNCTION

Plaintiff Counter-Defendant Blue Bell Creameries, L.P. (“Blue Bell”) responds in

opposition to the Motion for Preliminary Injunction filed by Denali Co., LLC and Denali

Flavors, Inc. (collectively “Denali”) on June 22, 2008.1

Blue Bell construes Denali’s Motion for Preliminary Injunction (“Denali’s Motion”) to

seek a preliminary injunction under 15 U.S.C. § 1114, which is Count I of Denali’s

Counterclaims. (D.E. # 6). Denali’s Counterclaims for Federal Unfair Competition under 15

1
This Opposition is being filed without knowledge of expert reports that Denali will offer during the
preliminary injunction hearing set by the Court for June 23, 2008. The Court is thanked for requiring Denali to
identify on July 18, 2008, all experts to be called to testify, and to provide draft affidavits of each expert on
July 21, 2008; however, Blue Bell formally objects to this Court scheduling the preliminary injunction hearing
so quickly that Blue Bell will not have received responses or documents due from Blue Bell discovery requests
on July 30, 2008, in order to prepare its best defense.

052680.0041 WEST 6263862 v6 As of July 18, 2008, 3:24 PM 1

U.S.C. § 1125(a) (Count II), Federal Trademark Dilution under U.S.C. § 1125(c) (Count III), and

State Unfair Competition (Count IV) are not asserted.

I. ISSUES PRESENTED FOR DETERMINATION BY THIS COURT

The fundamental issue that Denali must prove in order to justify a preliminary injunction

is that there is a likelihood of confusion between Blue Bell’s usage of MOOO TRACKS and

Denali’s MOOSE TRACKS® within the context of the marketplace, including Blue Bell’s

distinctive trade dress and well-known dominant brands BLUE BELL® and the COW AND GIRL

LOGO ®. Denali must also offer specific evidence of irreparable harm.

II. BACKGROUND AND STATUS OF THE CASE

A. Background -- Blue Bell’s Entry into the “_____ TRACKS” Market

Desiring to enter the “____ TRACKS” market, which was occupied not only by MOOSE

TRACKS® but also by third party “____ TRACKS” flavors, in late 2006, Blue Bell chose the

name MOOO TRACKS because (1) Blue Bell had a firm belief that there would be no likelihood

of confusion with MOOSE TRACKS® or other “___ TRACKS” flavors, (2) because Blue Bell

believed it had a right to use its “MOOO” trademark as used in MOOO BARS® within a natural

zone of expansion in the ice cream business, and (3) because Blue Bell’s highly distinctive and

well-known dominant brand BLUE BELL®, its COW AND GIRL LOGO, and the trade dress of its

cartons convinced Blue Bell that there would be no likelihood of confusion with MOOSE

TRACKS® or other tracks marks.

Blue Bell generally agrees with Denali’s summary of its 2007 introduction of MOOO

TRACKS in a three-gallon size, (Ex. 42) and that beginning in January 2008, Blue Bell began

selling MOOO TRACKS ice cream in one-half gallon containers displaying its well-known trade

dress. In its product launch in January, Blue Bell sent out press releases and invested in

substantial radio, television and billboard advertising to build up its new MOOO TRACKS

2
product as a new flavor entry into the “____ tracks” market -- a first time entry for Blue Bell.

(Ex. 1, ¶ 5). Blue Bell spent $1,399,113.70 in television advertisements and $390,208.13 in

radio advertisements. (Ex. 1¶¶ 15-16; Exs. 29, 30). Blue Bell’s billboards included a series of

generic hooves. (Ex. 31). The billboards ran from March 17, 2008, to May 18, 2008, only.

(Id.). Blue Bell’s sales territory includes Texas and parts of the Southeastern and Southwestern

U.S. (Ex. 12).

In its letter of March 17, 2008, Denali demanded that Blue Bell cease and desist using

MOOO TRACKS, turn over its original artwork, the names and addresses of all distributors and

retailers, and provide an accounting of all units of ice cream sold under the MOOO TRACKS

name, as well as the number of units remaining in inventory. (Ex. 43). Since nothing in the

Denali letter suggested any room for compromise and litigation was imminent, Blue Bell sued

Denali in the Southern District of Texas on March 28, 2008. (D.E. #1). Denali waited until June

22, 2008 to file this Motion for Preliminary Injunction, and on July 11, this Court granted

hearing for July 23, denying Blue Bell’s Motion to Consolidate.

III. SUMMARY OF ISSUES/ARGUMENT

A. Denali’s Motion for Preliminary Injunction should be denied

Denali’s Motion should be denied for at least the following reasons:

• Denali is unable to meet its burden of proof that there is a likelihood of

confusion. Denali’s Motion asserts that Blue Bell’s MOOO TRACKS
infringes Denali’s MOOSE TRACKS®.2 Denali’s Motion and
accompanying exhibits offer little substantive evidence. Denali has only
offered a comparison of the terms — Blue Bell’s MOOO TRACKS and
Denali’s MOOSE TRACKS®. Denali has not taken into consideration (1)
the substantially well-known marks BLUE BELL and the COW AND GIRL
LOGO; the distinctive carton trade dress in which Blue Bell sells MOOO

2
Blue Bell understands that specifically, Denali asserts infringement of U.S. Trademark Registration Nos.
1,806,802 and 2,303,587, which are collectively referred to as “MOOSE TRACKS®.”

3
 TRACKS and its other products, as compared to the variety of carton trade
dresses through which Denali’s licensees sell MOOSE TRACKS.

• Denali’s claim that Blue Bell entered this market intentionally in order to
trade upon the goodwill of Denali and its licensees is unfounded. Blue
Bell, the third largest ice cream manufacturer in the United States, is well
known for its high quality products and does not need to trade upon
anyone else’s goodwill.

• If the Court grants this preliminary injunction, it will be a defacto

permanent injunction because Blue Bell will have to give up its
investment in MOOO TRACKS as its “___ tracks” ice cream entry, and
start all over with a new name and thus lose its continuing development of
its “cow” or “dairy” marketing theme and heritage represented in MOOO
TRACKS. On the other hand, if this Court denies Denali’s Motion, the
status quo of fair competition between the parties will continue.

IV. BACKGROUND FACTS RELEVANT TO THE ISSUE OF LIKELIHOOD

OF CONFUSION

A. “Tracks” as a Designation for an Ice Cream Flavor, Has De Minimis Value

Due to Third Party Use

On August 4, 1998, Denali Flavors, L.L.C. filed a U.S. trademark application on

“TRACKS” to identify ice cream in Class 30. (Ex. 21). Denali abandoned that effort in 1999,

and no wonder, for by that time “TRACKS” had long been a common name for ice cream.3

While it is possibly only theory, Blue Bell believes that the term “tracks” describes ice creams in

which there is typically some kind of swirl, such as a chocolate or caramel swirl, with chocolate-

covered inclusions, such as peanut butter cups. This flavor description generally fits third party

“______ tracks” users, such as FUDGE TRACKS (identical, Ex. 24 and 25), BUNNY TRACKS

(almost identical, Ex. 16), GATOR TRACKS (Ex. 19), MAINE LOBSTER TRACKS (Ex. 20),

3
The abandoned file is unavailable in the U.S. Patent and Trademark Office, so Blue Bell cannot determine if
Denali abandoned after rejection. Blue Bell has requested production, but is not entitled to Denali’s response
and documents until July 30, 2008. This Court’s setting of the hearing on preliminary injunction prevents
Blue Bell from obtaining any discovery from Denali, even though Blue Bell has been diligent in seeking
evidence.

4
TURTLE TRACKS (Ex. 15), COW TRACKS (Ex. 17), CARAMEL MOUNTAIN TRACKS

(Ex. 22), BEAR TRACKS (Ex. 18) and possibly WOLF TRACKS (Ex. 26).

While Denali argues through its licensee’s affidavits that Blue Bell copied the MOOSE

TRACKS® “flavor profile” of vanilla ice cream with peanut butter-flavored chocolate inclusions

and a ribbon of chocolate fudge variegate, in actuality Blue Bell copied the collective flavors of

MOOSE TRACKS®, Dreyer’s and Edy’s Fudge Tracks and Bunny Tracks (which also has

chocolate covered peanuts).4 (Ex. 16).

While Denali argues that its trademarks are strong, incontestable and entitled to the

broadest scope, Denali’s failure to clearly identify itself as licensor on the different cartons

diminishes the strength of the marks.

B. Blue Bell’s Registered, Incontestable Mark on MOOO BARS®

Blue Bell began use of MOOO with the introduction of its MOOO BARS® ice cream bar

in December 1984. MOOO BARS® is the subject of U.S. Trademark Registration No.

2,090,314, and in that registration, “BARS” is disclaimed apart from the mark as shown. (Ex. 6).

Thus, the dominant term in Blue Bell’s MOOO BARS® registration is “MOOO” to identify ice

cream confection. Blue Bell has sold $35,000,000 of MOOO BARS® since 2000. (Ex. 1, ¶ 6,

Exs. 10, 13).

4
Other “tracks” users use very similar flavor profiles. The flavor profile for Gator Tracks is vanilla ice cream,
chewy brownie pieces, fudge bits, Reeses bits, in a chocolate brownie swirl. (Ex. 19). Turtle Tracks, a
Mayfield (Denali licensee) product, has a flavor profile of vanilla ice cream, chocolate caramel turtles,
chocolate-covered pecans in a caramel swirl. (Ex. 15). Blue Bell has made similar flavors in the past. Its “Tin
Roof” is vanilla with a chocolate swirl having chocolate-covered pecans. (Ex. 1, ¶ 5).

5
 U.S. Trademark Registration No. 2,090,314 on MOOO BARS® is incontestable such that

the registration is conclusive evidence of Blue Bell’s “exclusive right to use the registered mark

in commerce.” 15 U.S.C. § 1115(b).5

C. Blue Bell’s Dairy Cow Tradition

Blue Bell, the “Little Creamery in Brenham,” has a tradition of promoting its dairy roots.

Blue Bell’s television advertisements have often featured dairy cows. (Ex. 1, ¶ 7, Exs. 39, 40).

Its dairy tradition led to development of its COW AND GIRL LOGO, which was first used in 1976,

and has “walked” the lower perimeter of every Blue Bell carton for 32 years. Blue Bell’s COW

AND GIRL LOGO is the subject of U.S. Trademark Registration No. 1,144,445 (Ex. 5) and is

joined with “Blue Bell” in U.S. Registration No. 3,221,632 (Ex. 7). BLUE BELL itself is the

principal brand and has been used by Blue Bell since 1938 and is a registered U.S. trademark.

(Ex. 8).

In determining the first name for MOOO TRACKS, Blue Bell chose to build upon its

MOOO BARS® name and legacy, as further enhanced by U.S. Trademark Registration No.

2,614,293 on MOOO-LLENNIUM CRUNCH (Ex. 49), its line of MINI-MOOOS, a smaller size

confection no longer made, and even its Blue Bell Country Store T-shirts entitled

“MOOOLICIOUS”. (Ex. 1, ¶ 6, Ex. 11). In choosing a name building on Blue Bell’s dairy

theme and its legacy in MOOO BARS®, Blue Bell was confident that there would be no

likelihood of confusion with MOOSE TRACKS® or other “___ tracks” trademarks because

MOOO TRACKS would be sold in Blue Bell’s well-known solid-color carton trade dress, which

5
Blue Bell has not located legal precedent to support a claim of legal priority as a result of its 1984 first use of
MOOO BARS® long prior to MOOSE TRACKS® first use in 1992; however, the legacy of MOOO in MOOO
BARS® was certainly a logical stepping stone to adopting and promoting MOOO TRACKS as a new Blue
Bell flavor. (Ex. 3, ¶ 7).

6
always includes its famous brand BLUE BELL as well as its almost-as-famous COW AND GIRL

LOGO. (Ex. 1, ¶ 12).

V. LAW AND ARGUMENT

Blue Bell and Denali substantially agree on the legal criteria governing grant and denial

on temporary injunctive relief. A preliminary injunction is an extraordinary and drastic remedy

granted or denied at the Court’s discretion. Harris County v. Carmax Auto Superstores, Inc., 177

F.3d 306, 312 (5th Cir. 1999). The movant must establish a likelihood of success on the merits,

and there must be a substantial threat or irreparable injury if the injunction is not granted, and the

threatened injury to the movant must outweigh the threatened injury to the opponent. Evergreen

Presbyterian Ministries, Inc. v. Hood, 235 F.3d 908, 918 (5th Cir. 2000). Denali must prove that

the likelihood of confusion will actually cause irreparable injury for which there is no adequate

legal remedy. Union Nat’l Bank of Texas, Laredo, Texas v. Union Nat’l Bank of Texas, Austin,

Texas, 909 F.2d 839, 844 (5th Cir. 1990). Blue Bell further agrees that a preliminary injunction

should only be granted where the questions raised against the likelihood of success on the merits

are not so serious, substantial and doubtful as to make them fair ground for a more deliberative

investigation. Bank of Montreal v. Sunrise Energy Co., 1994 WL 240792, *5 (S.D. Tex. March

24, 1994). (Denali’s Motion at 9).

A. There Is No Likelihood of Confusion Between “MOOO TRACKS” and

“MOOSE TRACKS” as Used in the Marketplace

Blue Bell agrees with Denali’s description of the seven digits to be considered in

determining likelihood of confusion, as set out below. See Elvis Presley Enter., Inc. v. Capeve,

141 F.3d 188, 194 (5th Cir. 1998).

7
 1. Denali’s MOOSE TRACK® Asserted Marks, as used in the Marketplace,
are Not Strong

In view of the large number of third-party user of “_____ tracks”, and the fact that Denali

itself attempted to obtain a trademark on “TRACKS” and failed (Ex. 21), the term “TRACKS”

has minimal impact upon the infringement issue.

In determining the strength of a mark, extensive third-party use of similar marks will

diminish the strength of that mark. Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th

Cir. 1980); First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, (10th Cir. 1996).

Extensive third-party use of a mark or term means that the term deserves weak protection.

According to McCarthy, “customers [may] have become so conditioned by a plethora of such

similar marks that customers ‘have become so educated to distinguish between different [such]

marks on the basis of minute distractions.’” 2 MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION §11:88, at 11-149 (4th ed. 2008) (quoting Standard Brands, Inc. v. RJR Foods,

Inc., 192 USPQ 383, 1976 WL 21135 (T.T.A.B. 1976)). Further, extensive third-party use

shows the mark has been diluted in the marketplace, and the mark becomes “a less effective

vehicle for signifying the exact origin of products or services.” New Century Financial, Inc. v.

New Century Financial Corp., 2005 US DIST LEXIS 41192, *11 (S.D.Tex. Oct. 4, 2005). The

greater the number of identical or more or less similar marks in use, the less is the likelihood of

confusion. First Sav. Bank, 101 F.3d at 653-654.

In Sun Banks of Fla., Inc. v. Sun. Fed. Sav. & Loan Ass’n, 651 F.2d 311 (5th Cir. 1981),

the Court of Appeals for the 5th Circuit found “Sun Banks” and “Sun Federal Savings and Loan”

were distinct and non-confusing. The court took significant note of the extensive third-party use,

including within the financial industry, and found the term “Sun” to be weak and diluted. Id. at

316-317. The court stated that “whether an addition is sufficient to prevent confusion in a

8
particular instance depends upon the strength of the main part of the mark and the distinctiveness

of the additional features.” Id. at 316. Due to the weakness of “Sun” from third-party use, the

court looked to the additional terms for the confusion analysis and found no likelihood of

confusion.

Denali asserts that its MOOSE TRACKS® marks are very strong because they have been

used in interstate commerce since 1992. Denali asserts that the marks have gained “fame

throughout North America” and that the purchasing public has come to know and rely upon the

marks as indicators of sorts; however, Denali has offered no proof, except conclusions, of any

fame or secondary meaning in the form of recognition by the purchasing public.

Denali’s usage of MOOSE TRACKS® in the marketplace is limited by the carton trade

dress of its licensees who use a wide variety of trade dresses. (Ex. 35). Each carton includes a

small Denali blue “flag” that is dominated by the brand of the licensee. (Id.) There is no

consistency from one licensee’s carton to another in terms of color or trade dress, and no clear

explanation on the cartons that affirmatively state that Denali is a licensor. Someone well-versed

in trademark law may deduce the dominant brand is that of a licensee, but Denali’s Motion offers

no admissible evidence that the purchasing public have come to understand that. Considering

the wide variety of trade dress utilized by licensees, Denali’s asserted marks are not strong as

used in the marketplace. Based upon statistics from Dairy Facts, 2006 Edition, MOOSE

TRACK® is not even listed as a prominent ice cream flavor. (Ex. 32). In comparison, as

certainly one of the most prominent ice cream trademarks in the United States, across all of its

flavors, which have the same USP number, Blue Bell had the number one ranking for the 52

weeks ending September 8, 2007. (Ex. 33).

(a) Prior Use of “MOO(O) TRACKS” by Others Prevents Enforcement of

MOOSE TRACKS®

9
 An April 2008 Thomson & Thomson search report shows numerous third-party uses of

MOO(O) TRACKS, used in connection with frozen dairy products. For example, “Dean

Rewards MOOO Tracks Ice Cream Sandwiches” (Ex. 28, pp. 201-2, 210), Mooville Ice Cream

Moo-Tracks (Id. at 204), “Choose from strawberry, vanilla, chocolate or MOO Tracks” (Id. at

205-6), “Maggie Moos calls it MOO Tracks” (Id. at 207-8), “My mom had MOO Tracks…” (Id.

at 214), “Ice Cream Flavors for the day. Chocolate Moose…MOO Tracks…” (Id. at 218),

“[T]hey were trying to decide between Mocha Almond Assault and MOO Tracks…” (Id. at 220),

and “Homemade Ice Cream… [various flavors] MOO TRAX…” (Id. at 222). These multiple

uses of MOO TRACKS marks suggest that “moo tracks” may be a generic term for a flavor -

presumably a flavor similar to that of Blue Bell’s MOOO TRACKS product. If so, a recent Fifth

Circuit case indicates that such a term cannot infringe an otherwise arguably confusingly similar

mark:

A trademark cannot be infringed by the generic term for the

product it designates. This is true even if consumers are confused
by a competitor’s use of a generic term.

Small Business Assistance Corp. v. Clear Channel Broadcasting, Inc., 210 F.3d 278, 279 (5th

Cir. 2000). This case held that SUMMER JAM, for a summer musical event, could not infringe

UNCLE SAM JAM, for the same type of event, simply because “summer jam” was deemed a

generic term for such an event.

2. Dissimilarity of Marks in the Context of Usage

The context in which a mark appears, particularly for goods that are sold side-by-side,

has been an important factor in the likelihood of confusion analysis in the Fifth Circuit.

According to the Court of Appeals for the Fifth Circuit, “[c]ourts consider marks in the context

that a customer perceived them in the marketplace.” Elvis Presley Enter., Inc., 141 F.3d at 197.

10
The court has made clear that the fact that two marks may contain the same or similar wording

does not, by itself, render the marks confusingly similar: “A mark must be viewed in its entirety

and in context. It is the overall impression that counts.” Armstrong Cork Co. v. World Carpets,

Inc., 597 F.2d 496, 502 (5th Cir. 1979).

The marks at issue in Armstrong were the mark WORLD and the corporate name

ARMSTRONG WORLD. In overturning a trial court finding of likelihood of confusion, the

Fifth Circuit considered the labels used by each party. Finding the labels dissimilar (and,

significantly, the placement and emphasis on the common term WORLD in each label to be very

different), the court concluded that use of the marks as shown on the labels did not give rise to a

likelihood of confusion. See also Sun-Maid Raisin Growers of California v. Sunaid Food

Products, Inc., 356 F.2d 467, 469 (5th Cir. 1965); McCarthy 23:58-60.

Denali cannot escape the marketplace -- the context or habitat in which the Denali

asserted marks are used. Because Denali’s marks are used across a wide variety of trade dress,

the number of “____ tracks” flavors may vary from city to city. In view of time constraints, Blue

Bell directs the Court to usage of MOOSE TRACKS® in Houston, Texas, for its licensees

Kroger and Randalls. In Randalls’ stores, Denali’s MOOSE TRACKS® is sold under the

“Safeway Select” brand. (Ex.37). Within Kroger stores, MOOSE TRACKS® is sold under the

brand “Private Selection.” (Ex. 36)6. In contrast, Blue Bell’s MOOO TRACKS is sold in its

standardized carton trade dress used across all Blue Bell ice cream, which exhibits most

prominently the BLUE BELL mark at the top, with the COW AND GIRL LOGO circling the carton

at the bottom, with the MOOO TRACKS flavor name in between. (Ex. 34). Within this context,

6
Photographs taken from a local Wal-Mart displaying Blue Bell’s MOOO TRACKS and BUNNY TRACKS are
found in Ex. 38.

11
where the Blue Bell marks dominate, and the Denali licensed products are sold under brands

such as Safeway Select and Private Selection having different trade dress backgrounds from Blue

Bell. Potential purchasers, consumers or even observers are not likely to be confused. (Ex. 2

¶ 16b.).

Although no case law comparing marks starting with “MOOSE” or “MOO(O)” –

especially when followed by “tracks” – could be found, a closely analogous case was found. In

Black Dog Tavern Co. v. Hall, 823 F. Supp. 48 (D. Mass. 1998), Plaintiff’s THE BLACK DOG

and registered Black Dog Design marks were held not infringed by Defendant’s THE BLACK

HOG and Black Hog Design marks, despite the fact that both marks were used for some of the

very same goods, namely, clothing. Finding Plaintiff’s marks to be “arbitrary or fanciful” and

thus “inherently distinctive,” id. at 53, the court analyzed the parties’ marks’ “appearance, sound

and meaning.” Id. at 54. As to the word marks, the court said:

The written marks utilized by the parties share some common

characteristics. Each is comprised of three monosyllabic words:
the definite article, an adjective, and a noun denoting an animal.
Also, each is printed in the same typeface and appears above the
term “Martha’s Vineyard” and, in most instances, the year. “The
Black Dog” and “The Black Hog” are most alike in sound and
appearance, differing only by one letter….

Despite their phonetic similarities, the parties’ written marks, like

their corresponding designs, connote very different meanings.
Color notwithstanding, a dog and a hog are two very different
creatures, unlikely to be confused in the average person’s mind.

Id. at 55 (emphasis added). See also, Care First of Maryland, Inc. v. First Care, P.C., 434 F.3d

263, 271 (4th Cir. 2006).

(a) “MOOO” is a Sound, “MOOSE” is an Animal

The expert report of David Yerkes, a professor of English at Columbia University,

analyzes the terms “MOOO” and “MOOSE” from a linguistic viewpoint and concludes that

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MOOO TRACKS and MOOSE TRACKS® are unlikely to be confused. (Ex. 3). According to

Dr. Yerkes, because the terms MOOO and MOOSE are the beginning elements, people will find

those terms to be most important in trying to comprehend and remember the terms. (Id. at ¶4).

MOOO and MOOSE differ significantly in sight; MOOSE is a spelling of a word, while MOOO

is a spelling of a noise. (Id. at ¶5). MOOO is an abnormal spelling and is highly distinctive and

draws attention to itself. (Id. at ¶6). The three O’s in a row may be understood as directly

conveying the actual noise that the cow makes or as a fanciful spelling of the word “moo.”

Either way, according to Dr. Yerkes, the spelling of MOOO is highly distinctive and easily

comprehended and unlikely to be confused with the spelling of MOOSE. (Id. at ¶7). Because it

is so direct and immediate, a spelling such as MOOO grabs a persons attention, however

impulsive a person may be, in a way that an ordinary word such as MOOSE cannot. (Id. at ¶9).

Dr. Yerkes gives examples of comparable words in which the public can easily

distinguish between two words even though they have common elements: “GOO” and

“GOOSE”; “LOO” and “LOOSE.” As stated by Dr. Yerkes, no one would confuse “GOO

TRACKS” with “GOOSE TRACKS,” much less “GOOO TRACKS” with “GOOSE TRACKS.”

(Id. at ¶10).

MOOO TRACKS and MOOSE TRACK differ significantly in sound. MOOO conveys

the sound of the actual noise the cows make, unlikely to be confused with the sound that a word

such as MOOSE makes when it is pronounced. (Id. at ¶11). “MOOO” is an onomatopoeic

word, which suggests a sound -- the moo of a cow. The addition of the third “O” suggests the

sound even over the English word “moo.” (Id. at ¶13).

Surprising to those of us who are not linguists, Dr. Yerkes states that it takes longer to

say MOOO than it does to say MOOSE because the extra O compels the speaker to take an

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abnormal, perhaps comical, amount of time in saying “MOOO.” (Id. at ¶14). In sum, the

meaning of the terms “MOOO” and “MOOSE” -- the actual noise which only suggests the

animal versus the actual name of the animal -- distinguishes between the two words. (Id. at ¶17).

3. Similarity of Products - MOOO TRACKS, MOOSE TRACKS®, FUDGE

TRACKS and BUNNY TRACKS

The flavor profiles of both MOOO TRACKS and MOOSE TRACKS® is the same as

that of FUDGE TRACKS (Dreyer’s and Edy’s Exs. 24-25) and very close to BUNNY TRACKS

(Ex. 16), another track flavor found in Houston. The fact that “tracks” refers to various ice

cream flavors having chocolate peanut butter inclusions, and that multiple “_____ tracks” names

have essentially the same or similar flavor profiles, the similarity of ice cream flavors is not

limited to Blue Bell and Denali’s licensees.

4. Identity of Advertising

Blue Bell agrees that the advertising media is the same for Blue Bell, Denali’s licensees

and third party “______ tracks” ice cream.

5. While Retail Outlets Are the Same, Shelf Space By Brand Must Be
Considered

Blue Bell submits photographs taken from three local stores, as follows:

Randalls
(Ex. 37)

Blue Bell Dreyer’s Safeway Select

MOOO TRACKS Fudge Tracks MOOSE TRACKS

Kroger
(Ex. 36)

Blue Bell Dreyer’s Private Selection/Interamerican

MOOO TRACKS Fudge Tracks MOOSE TRACKS

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 Wal-Mart
(Ex. 38)

Blue Bell Blue Bunny

MOOO TRACKS BUNNY TRACKS

In grocery stores, ice cream is displayed according to shelf space, and shelf space is

allotted by brand (Ex. 1, ¶ 10). Blue Bell is very popular in Houston, and often has more shelf

space, as compared to other brands. (Ex. 36-38). This allotment of shelf space by dominant ice

cream maker brand makes an important point -- value and recognition of the dominant brand of

the ice cream maker. When a consumer or potential purchaser approaches the refrigerated banks

housing ice cream, the consumer first sees an array of brands, not flavors. (Id.) The consumer

needs to know the dominant brand in order to locate the flavor of choice. Blue Bell, as well as

all other ice cream makers, invests millions of advertisement dollars into promoting their brands,

and they do that because consumers are educated to have the loyalty to the brand, such as Blue

Bell. (Ex. 1, ¶ 10).

As displayed by brand, ice cream is not a product that an “impulsive buyer” quickly runs

up to an array of freezer space, opens a freezer door and grabs a flavor. It is much more likely

that there is brand loyalty, and that consumers relate to the ice cream maker brand first, and to

the flavor second. In sum, Blue Bell’s MOOO TRACKS is distinctive from the various MOOSE

TRACKS® sold by different licensees and other “___ TRACKS” sold by third-party users.

6. Blue Bell Chose MOOO TRACKS in Good Faith

Denali accuses Blue Bell and its president, Paul Kruse, of a lack of good faith and “evil

intent.” (Motion at 15). When Blue Bell chose the MOOO TRACKS name, Mr. Kruse was

aware of MOOSE TRACKS®, but he also was aware of third-party users of “___ TRACKS.”

(Ex. 1, ¶ 8-9). Mr. Kruse further knew of the tremendous power of the BLUE BELL brand as

well as Blue Bell’s reputation and practice of the highest standards for making quality ice cream.

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Mr. Kruse was confident that consumers would not confuse MOOSE TRACKS® sold under a

variety of licensee names with Blue Bell’s MOOO TRACKS ice cream, particularly in view of

Blue Bell’s prior use of MOOO in the MOOO BARS ice cream confection for 20 years, third

party uses of “_____ tracks” and Blue Bell’s famous name and distinctive trade dress. (Ex. 1,

¶ 12, Ex. 34).

Blue Bell wanted to get into the business of making a “___ tracks” ice cream. Blue Bell

was moved to use Blue Bell’s own MOOO as used in MOOO BARS® as its primary name for

its “tracks” ice cream. Contrary to Denali’s accusations, it was not a matter of choosing one

word in the English language out of 500,000, Blue Bell’s and Mr. Kruse’s choice of MOOO fit

the context of a “_____ TRACKS” ice cream because it was consistent with Blue Bell’s desire to

build upon its dairy heritage of its MOOO BAR® trademark, its MOOO-LLENIUM CRUNCH®

trademark, and its prior MINI-MOOS products.

Before making a firm decision, Mr. Kruse obtained a Thomson & Thomson search report

(Ex. 27), reviewed it, and concluded its MOOO TRACKS would fairly compete in the “_____

tracks” marketplace.

Denali argues over and over that Blue Bell copied its flavor. Certainly, the specific

MOOO TRACKS flavor was new to Blue Bell, but Blue Bell had made similar flavors in the

past. (Ex. 1, ¶ 5). Further, the MOOSE TRACKS® flavor profile is neither proprietary or

unique in view of the same “tracks” flavor being sold as FUDGE TRACKS (Exs. 24-25) and the

very similar flavor of BUNNY TRACKS, which is the same as MOOSE TRACKS® except that

BUNNY TRACKS adds chocolate-covered peanuts. (Ex. 16).

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 7. Denali’s Evidence of Actual Confusion is De Minimis Even if the Internet
Chatters are Confused – Which They Are Not

In Denali’s Supplemental Brief (D.E. #17), it references three alleged instances of actual

confusion. First, three alleged instances of confusion is not enough to show confusion, as merely

a small number of instances may be dismissed as inconsequential or deminimis. (Ex. 2, ¶ 18).

As the U.S. District Court for the Southern District of Texas stated, “a drop in the bucket will not

support a finding of actual confusion.” Atec, Inc. v. Societe National Industrialle Aerospatiale,

798 F.Supp. 411, 414 (S.D.Tex. 1992).

Second, one to two of these instances actually indicate knowledge that MOOSE

TRACKS® is from a different source than Blue Bell. The first instance, regarding the blogger

from Texas now living in the East, is merely banter in an open internet chat room. This blogging

is clearly outside the marketplace and does not consider Blue Bell’s trade dress or that of

Denali’s licensees. Further, when Leigh states “I’ve also had Moose Tracks and it was very

good”, nowhere does she reference or relate MOOSE TRACKS to Blue Bell. Leigh may be

assuming that MOOO TRACKS and MOOSE TRACKS® are the same flavor, but may also

recognize that Blue Bell MOOO TRACKS is not Denali’s MOOSE TRACKS®.

In the second instance, regarding WingsFan, the flavor profile of MOOO TRACKS had

been described earlier in the blog thread. WingsFan later states her kids can’t wait to get their

hands on this – referring to MOOO TRACKS, and meaning they have not purchased it – and that

“in Michigan, they always got an ice cream called Moose Tracks and it’s the same thing.” When

WingsFan references “the same thing”, the blogger is clearly referencing the same flavor

previously described. She clearly differentiated between MOOO TRACKS and MOOSE

TRACKS as two different products with the same flavor.

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 Last, in the third instance regarding katiedyerr, taking the entire blog in context, the

flavor profile of Mooo Tracks was again disclosed. Katiedyerr, recognizing the flavor profile

discussed earlier in the blog thread, states “this is my favorite flavor”, then states that “moose

tracks is deliciousness.” There is no indication that katiedyerr believes MOOSE TRACKS® is

related to Blue Bell, the blog statements merely suggests that she recognized the Blue Bell flavor

description as the same as MOOSE TRACKS®.

B. Denali Has Failed to Prove Likelihood of Confusion

Considering the actual market place, the distinctiveness of Blue Bell’s dominant brand

displayed on every BLUE BELL carton, the display of ice cream by brand in stores, between

“MOOO” and “MOOSE” in sight, sound and meaning, and the lack of evidence that Blue Bell

intended to trade upon Denali’s goodwill, Denali has failed to prove a likelihood of confusion.

C. Denali Must Bear the Burden of Proof of Irreparable Injury

Subsequent to the seminal Supreme Court e-Bay case removing the presumption of

irreparable injury upon a finding of patent infringement, two trademark cases have raised the

question whether there remains a presumption of irreparable injury upon a finding of likelihood

of confusion. See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1227-1228 (11th

Cir. 2008); MyGym, LLC v. Engle, 2006 WL 3524474, *11-12 (D.Utah Dec. 6, 2006). While

Denali may offer proof at the hearing, the affidavits attached to this motion are merely

conclusory and do not sufficiently support the movant’s burden of proof of irreparable injury.

MyGym, 2006 WL 3524474 at *12.

D. The Public Interest is Not Served by Diminishing Competition

The public interest is not always best served by protecting an allegedly infringed

trademark by entering an injunction against the accused mark. There are broader economic

implications associated with a preliminary injunction, and needs of the public interest, than

18
preemptively enforcing a trademark through injunction. Calvin Klein Cosmetics Corp. v. Lenox

Labs., Inc., 815 F.2d 500, 505 (8th Cir. 1987). Courts should look into other public interest

factors, such as obtaining the lowest possible prices for consumers, avoiding monopolies and

encouraging, not stifling, competition. Id. These factors suggest an injunction is not in the

public interest when the movant fails to make a substantial showing of a viable claim, and “the

public interest requires preserving the status quo until the issues can be fully adjudicated.” Asics

Corp. v. Target Corp., 282 F.Supp.2d 1020, 1032 (D.Minn. 2003).

“If defendant is competing lawfully, the public interest supports

the denial of an injunction. If defendant is infringing the plaintiff’s
trade dress, the “public interest” would be served by the granting
of an injunction. As the public interest cannot be determined
independently from the substance of the dispute, it is not entitled to
much separate weight in the evaluation of the balance of harms
between the parties.”

Waldmann Lighting Co. v. Halogen Lighting Sys. Inc., 28 USPQ2d 1682, 1686 (N.D.Ill. 1993).

VI. CONCLUSION

Denali brought this Motion late and without fair warning. Denali’s Motion, supported

only by attorney argument and conclusory Affidavits in which the topical paragraphs align,

should be denied. Blue Bell’s dominant marks, its unique carton, when compared to the array of

the cartons and diversity of brands of Denali’s licensees, fully support a denial of Denali’s

Motion, which Blue Bell respectfully requests in closing.

Dated: July 18, 2008

Respectfully submitted,

/s/ Lester L. Hewitt

LESTER L. HEWITT
State Bar No. 09559000
lhewitt@akingump.com

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 JAMES L. DUNCAN III
State Bar No. 24059700
jduncan@akingump.com
AKIN GUMP STRAUSS HAUER & FELD LLP
1111 Louisiana Street, 44th Floor
Houston, Texas 77002-5200
Phone: (713) 220-5800
Fax: (713) 236-0822

Attorneys For Plaintiff/Counter Defendant

Blue Bell Creameries, L.P.

CERTIFICATE OF SERVICE

The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be served by
email this 18th day of July, 2008.

/s/ Lester L. Hewitt

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