By Eric Schweibenz
On March 5, 2012, Fabri-Kal Corp. of Kalamazoo, Michigan (“Fabri-Kal”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Green Wave International, Inc. of Brooklyn, New York, Trans World International, Inc. of Brooklyn, New York, John Calarese & Co., Inc. of Medway, Massachusetts, and Eco Greenwares Corp. of Fremont, California (the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain food storage containers, cups, plates, cutlery, and related items and packaging thereof that infringe Fabri-Kal’s U.S. Trademark Registration No. 3,945,021 for GREENWARE®.

According to the complaint, Fabri-Kal markets a product line under the GREENWARE® trademark and logo.  GREENWARE® products are “manufactured using entirely plant-based plastics, which offer significant advantages over traditional plastic,” are compostable, and have a smaller environmental footprint than comparable products.  Fabri-Kal alleges that it has adopted and continually used the GREENWARE® trademark and logo since at least July 30, 2004.

The complaint describes the infringing activities of the Proposed Respondents, pointing to plastic molded food products manufactured in China under the names of “Greenwave,” “Green Wave,” and/or “Eco Greenwares.”  Fabri-Kal contends that allowing the Proposed Respondents to sell these products will “undermine consumer confidence in a leading manufacturer and innovator” and that the infringing products “are likely to be confused with Fabri-Kal’s domestically-sourced and domestically-produced products.”  Fabri-Kal asserts that, in addition to the potentially confusingly named products, the Proposed Respondents “use, and have used, in commerce, a reproduction, counterfeit, copy or colorable imitation of the GREENWARE® trademark in connection with the sale, offering for sale, distribution, or advertising of goods without the consent of Fabri-Kal.”

Fabri-Kal further asserts that it meets both the economic and technical prongs of the domestic industry requirement, arguing that it has “continually produced food containers, cups, and related items in the United States under the GREENWARE® trademark” and that it has made “substantial investments in capital and labor” including manufacturing, warehousing, and printing facilities.  Additionally, Fabri-Kal notes that it employs more than 800 people and extensively advertises and promotes the GREENWARE® products.  As a result of its marketing and sales efforts, Fabri-Kal’s GREENWARE® products “have come to be known as environmentally-responsible products of high quality, durability, and reliability.”  Fabri-Kal asserts that the goodwill it has developed in its GREENWARE® products is threatened by and will be substantially injured by the Proposed Respondents’ continued sale and distribution of infringing products.

With respect to potential remedy, the complaint requests that the Commission issue a general exclusion order barring entry into the United States any food containers and related products bearing marks confusing similar to the GREENWARE® trademark.  Fabri-Kal suggests that a general exclusion order is necessary based on “the ease with which Respondents can establish new identities.”  Alternatively, Fabri-Kal requests a limited exclusion order directed to each named Proposed Respondent and its subsidiaries and affiliates.  Fabri-Kal also requests cease and desist orders directed at the Proposed Respondents.