Jones Day Beats Dismissal Bid in Reynolds Wrap Row

Jones Day Beats Dismissal Bid in Reynolds Wrap Row Diego M. Radzinschi/THE NATIONAL LAW JOURNAL John Froemming of Jones Day

Reynolds Consumer Products Inc. cleared a hurdle on Thursday in a trademark and false advertising case against Handi-Foil Corp., a competitor that wants to eat away at Reynolds’ profits from its ubiquitous Reynolds Wrap aluminum foil.

In a summary judgment ruling, U.S. District Judge Liam O’Grady in Alexandria, Va., refused to toss claims that Handi-Foil engaged in false advertising by pitching its product as comparable to Reynolds Wrap. O’Grady also ruled as matter of law that Reynolds didn’t abandon its trademarks on Reynolds Wrap’s familiar design. The ruling is a win for John Froemming in the Washington office of Jones Day, who represents Reynolds. Handi-Foil is represented by attorneys at Kirkland & Ellis, including David Callahan and Robin McCue.

Wheeling, Ill.-based Handi-Foil is best known for its aluminum baking pans. In 2012, Handi-Foil partnered with Dollar Tree Stores Inc. to sell an aluminum foil product to compete with Reynolds Wrap. According to Thursday’s ruling, some of Handi-Foil’s products came in blue, pink, and silver packages that evoked the distinctive look of Reynolds Wrap. Handi-Foil’s packaging also stated “Compares to Reynolds Wrap Foil.”

Reynolds, originally represented by Fulbright & Jaworski (now Norton Rose Fulbright), brought suit in February 2013, alleging false advertisement, trade dress infringement, and trademark infringement. The case first centered on Handi-Foil’s packaging, which Reynolds alleged was intended to confuse consumers. Reynolds later amended its complaint to include allegations that Handi-Foil employees engaged in false advertising by writing in e-mails to supermarket purchasing agents that the company’s product was just as good as Reynolds Wrap.

In a Jan. 8 motion for summary judgment, Handi-Foil’s lawyers urged O’Grady to dismiss the later-filed allegations. They argued that the e-mails can’t give rise to false advertising claims, since one-to-one e-mails aren’t advertisements. Handi-Foil also asked the judge to find that Reynolds had abandoned its trademarks, which date back to the 1970s, by continually tweaking its packaging over the years.

In Thursday’s ruling, O’Grady granted Reynolds summary judgment on the abandonment claim, finding that Reynolds’ current packing is sufficiently similar to the relevant trademarks.

The judge also rejected Handi-Foil’s argument that he should dismiss the false advertising claims. “[T]he e-mail exchanges between Handi-Foil sales representatives and retail stores are clear examples of commercial speech meant to encourage stores to purchase Handi-Foil roll foil,” he wrote. “This, at the very least, creates a genuine issue of material fact as to whether the allegedly false statements were commercial advertisements,” he wrote.

Reynolds counsel Froemming declined to comment. Handi-Foil counsel Callahan wasn’t immediately available for comment.

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