Borinquen Biscuit Corp. v. M.V. Trading Corp.

Borinquen Biscuit Corporation (Borinquen) (plaintiff) was in the business of manufacturing and distributing crackers, cookies, and biscuits known as galletas. Since 1976, Borinquen had marketed a round, yellowish, semisweet galleta in Puerto Rico under the registered trademark RICA. The logo for Borinquen’s RICAs consisted of a red circle around the white-lettered phrase “Galletas RICA Sunland.” The RICA mark and logo were both registered with the Puerto Rico Department of State in 2000. During the time relevant to the litigation, Borinquen sold RICA galletas in predominantly red and white packaging with the circular logo centered on a background depicting rows of galletas. In 2003, M.V. Trading Corporation (M.V.) (defendant) began selling a round, yellowish, salty galleta under the name Nestlé Ricas. M.V.’s product logo consisted of a white oval with the name “Nestlé Ricas” centered in red type. M.V.’s packaging was also predominantly red and white with some yellow and blue design elements. The logo was centered in the upper half of the box against a background of scattered galletas. Both Borinquen’s and M.V.’s galletas were sold in Puerto Rican supermarkets and convenience stores. Borinquen sought damages and injunctive relief, alleging that M.V.’s Ricas mark and similar trade dress infringed Borinquen’s federal trademark and trade-dress rights. Although no evidence was presented of actual consumer confusion, the district court found that M.V.’s use of the Ricas mark was likely to cause confusion and preliminarily enjoined M.V. from advertising, distributing, or selling any galletas in Puerto Rico under the name Ricas. M.V. appealed.