Gerawan Farming, Inc. v. Prima Bella Produce, Inc
Case No. 1:10-cv-00148-LJOU.S. District Court, Eastern District of CaliforniaFresno, California
We defended Prima Bella Produce in a case involving two parties’ respective rights for trademarks including the word "Prima". Gerawan Farming has used that mark for its distribution and sales of stone fruits (peaches, plums, nectarines and apricots) and grapes since the 1970s. It is one of the nation’s largest suppliers of these fresh fruits. Prima Bella Produce is one of the country’s largest grower/suppliers of packaged fresh sweet corn sold under the Glori Ann label. Gerawan alleged federal and state claims for trademark infringement, dilution and unfair competition. Prima Bella Produce in turn alleged a counterclaim for trademark cancellation contending that Prima had become a generic or functional mark by virtue of Gerawan Farming’s inclusion of that name in the titles of peach, plum and nectarine plant patents it had obtained, and because it was used to designate plant varieties, which cannot function as trademarks. Case settled per a confidential settlement agreement. The case is most interesting because of the intersection between trademarks and use of an alleged mark as the name of a plant patent, which will pass into the public domain upon the conclusion of the patent term. After interposing affirmative defenses and a counterclaim based on this contention, Gerawan Farming then proceeded to file legal malpractice claims against its former intellectual property counsel who procured its plant patents that included the name Prima in their titles. The case settled shortly before trial was set to commence. We were able to trigger advertising injury coverage for this action from Travelers. This result occurred only after an extended negotiation. Any attorney who has ever tried to trigger advertising injury will tell you what a feat this is in the context of trademark litigation. Gerawan Farming sought disgorgement of all of Prima Bella Produce’s profits. The case settled after mediation in October 2011, shortly before trial scheduled to commence in November 2011.