Thursday, April 4, 2013, 5:21 PM

Essentially in Breach? E. T. Horn Co. Sued for Breach of Settlement Agreement and on TM-Related Counts

On March 20, 2013, Lawrenceville, Georgia-based Essential Ingredients, Inc. (“EI”) filed a complaint in the Northern District of Georgia against California-based E. T. Horn Company (“Horn”).  EI alleges that Horn, after having entered into a 2008 settlement agreement promising to stop using the term ESSENTIAL INGREDIENTS GROUP or any confusingly-similar variant thereof, began using the term ESSENTIALS in its description of its “Ingredients Division.”  EI asserts that such usage not only breaches the settlement agreement, but also violates EI’s rights concerning its ESSENTIAL INGREDIENTS® trademarks.  EI’s complaint recites counts of trademark infringement and dilution under federal law, related state law claims, and breach of contract.

EI describes itself as “one of the country’s largest independent representatives distributing its supply partners’ raw materials to client formulators in the personal care (‘PC’), household/industrial & institutional (‘HI&I’), cosmetic (‘Cosmetic’) and related industries.”

EI is the named registrant on U.S. Trademark Registrations for text and stylized versions of the mark ESSENTIAL INGREDIENTS®, namely Nos. 3,600,745 (“the ’745 Registration”) (word mark), 3,625,043 (“the ’043 Registration”) (stylized mark shown above), and 3,629,174 (“the ’174 Registration”) (word mark).  The ’745 Registration covers a variety of products relevant to the industries mentioned above, the ’043 Registration covers additional such products in those industries, as well as “independent distributorship services” related to those industries, and the ’174 Registration covers those same services.  The ’745 and ’043 Registrations list various classes of goods, each of which has its own recited date of first use of the registered mark in commerce.  The earliest such recited date of first use is May 31, 1996, for colorants.  EI states that it was founded in 1996.  Additionally, EI alleges that it obtained two California registrations for its ESSENTIAL INGREDIENTS® mark.

EI alleges that it earned the following awards and industry recognitions:
·         “Clariant Corporation’s Distributor of the Year in 2011 and 2012”
·         “DuPont Tate & Lyle’s Distributor of the Year 2012”
·         “Lubrizol Advanced Materials’ Distributor of the Year 2011”
·         “Designated a Responsible Distributor by the National – Association of Chemical Distributors (2003, 2007, 2010)”

According to the complaint, EI became aware in 2008 of Horn’s use of the term ESSENTIAL INGREDIENTS GROUP, leading to the settlement agreement between EI and Horn mentioned above.  “Less than five years later,” alleges EI, “Essential Ingredients has learned that [Horn] is violating the Previous Settlement Agreement and is continuing to infringe the Essential Ingredients Marks.”  EI points to Horn’s current use of the term ESSENTIALS as described above.

EI’s complaint concludes with requests for injunctive and monetary relief, including treble damages and attorneys’ fees.

The case is Essential Ingredients, Inc. v. E. T. Horn Co., No. 1:13-cv-0891-SCJ, filed 03/20/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and assigned to U.S. District Judge Steve C. Jones.

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