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Maduka v. Tropical Naturals, Ltd.

United States District Court, E.D. Pennsylvania

September 12, 2019

C. CHRIS MADUKA, Plaintiff
v.
TROPICAL NATURALS, LTD., Defendant

          MEMORANDUM

          Gene E. K. Pratter United States District Judge

         Chinjindu Chris Maduka claims that he developed a brand of "African black soap" and related body care products which he markets and sells using the marks DUDU OSUN and DUDU OSUM.[1] Mr. Maduka alleges that Tropical Naturals, Ltd.-a Nigerian entity that sells African black soap, among other things-infringed on his DUDU OSUN mark by selling products to businesses in the United States and elsewhere that bear the DUDU OSUN mark. He brings claims for trademark infringement and unfair competition under both federal and Pennsylvania law, and he seeks to recover $1, 020, 665.68, Tropical's alleged profits from its use of the DUDU OSUN mark in the last six years.[2]

         Tropical asserts counterclaims against Mr. Maduka for trademark infringement and unfair competition and claims that it is the rightful owner of the DUDU OSUN mark. Tropical seeks to recover $29, 235.02, Mr. Maduka's alleged profits from his use of the DUDU OSUN and DUDU OSUM marks in the last six years, and its attorneys' fees, and it moves for a permanent injunction barring Mr. Maduka from using the disputed marks. Tropical also asks the Court to order the United States Patent and Trademark Office to cancel Mr. Maduka's registration for the DUDU OSUM mark as well as Mr. Maduka's pending application for the DUDU OSUN mark.

         The Court presided over a three-day bench trial and later heard oral argument on the parties' proposed findings of fact and conclusions of law. Upon consideration of these proceedings and the evidence presented therein, the Court concludes, as set forth below, that:

(1) DUDU OSUN and DUDU OSUM are valid and legally protectable trademarks;
(2) Tropical, not Mr. Maduka, is the owner of the DUDU OSUN trademark;
(3) Tropical's ownership of the DUDU OSUN trademark predated any legally cognizable use in commerce by Mr. Maduka of the DUDU OSUM mark;
(4) Because, as the parties stipulated, the DUDU OSUM mark is confusingly similar to the DUDU OSUN mark, Tropical's prior ownership of the DUDU OSUN mark prevents Mr. Maduka from acquiring ownership rights in the DUDU OSUM mark;
(5) Tropical is entitled to a permanent and nationwide injunction restraining Mr. Maduka, his agents, and his employees from any use of either the DUDU OSUN or DUDU OSUM mark, or of any confusingly similar mark, in connection with the sale of African black soap or other body care products;
(6) Tropical is not entitled to a disgorgement of profits;
(7) Tropical is entitled to attorneys' fees;
(8) The Court will issue an order for cancellation by the U.S. Patent and Trademark Office of Mr. Maduka's DUDU OSUM registration; and
(9) The Court will not order cancellation of Mr. Maduka's DUDU OSUN application.

         Findings of Fact

         I. Background

         1. In this trademark case, the parties dispute the rightful ownership of the marks DUDU OSUN and DUDU OSUM but agree that those trademarks, with or without the use of a hyphen, are likely to cause consumers to be confused as to the source, sponsorship, or affiliation of goods when seeing the marks used on and in connection with soap and body care products. See Stipulations of Fact at ¶ 4.

         2. Plaintiff and Counterclaim Defendant Chinjindu Chris Maduka is an individual who resides in Lansing, Michigan. See Trial Tr. Day 1 at 9:5-7. He immigrated to the United States from Nigeria in 1981 and is a United States citizen. See Id. at 9:8-12.

         3. Defendant and Counterclaim Plaintiff Tropical Naturals, Ltd. is a Nigerian company. See Stipulations of Fact at ¶ 7. The parties agree that a company known as Cosmos Chemicals is the predecessor-in-interest to Tropical such that, for purposes of this case, Cosmos and Tropical may be considered to have been the same company. See Id. at ¶ 8; infra note 3.

         4. Mr. Maduka and Tropical both sell soap products, including bar soap, known in the soap industry as "African black soap." See Id. at ¶ 1.

         5. African black soap is especially popular in Nigeria and nearby West African countries and is also popular in the United States, particularly with immigrants from West African nations. See Id. at ¶ 2.

         II. The Parties' Use of the Disputed Marks

         A. Tropical

         6. Tropical presented evidence of its use of the DUDU OSUN mark. See Id. Tropical does not claim to have ever used the DUDU OSUM mark, but nonetheless claims that Mr. Maduka does not have rights to use either mark because Tropical established ownership rights to DUDU OSUN first, thus preventing subsequent, or junior, users from using confusingly similar marks, like DUDU OSUM.

         1. Origin of the DUDU OSUN Mark

         7. Abiola Ogunrinde, the founder and owner of Tropical, see Trial Tr. Day 2 at 4:11- 13, offered detailed testimony concerning the origin of the DUDU OSUN mark and how Tropical developed it. See Id. generally.

         8. Mr. Ogunrinde has a background in chemistry and, prior to forming his own company, worked for Unilever PLC where he oversaw the manufacture of several products, including soap. See Id. at 9:20-10:17.

         9. Following his work at Unilever, Mr. Ogunrinde founded Cosmos Chemicals- Tropical's predecessor in interest[3]-where he first began to manufacture and sell fillers for paint and tile in 1991. See Id. 45:1-18.

         10. However, in 1995, after an economic downturn in Nigeria, Mr. Ogunrinde changed his business model and started manufacturing and selling African black soap in Nigeria using the DUDU OSUN mark. See Id. at 45:19-48:11.

         11. Mr. Ogunrinde explained that Tropical's DUDU OSUN soap is different from traditional Western soaps-which are made from animal fat-because it is made from vegetable oil and other natural products, including palm kernel oil, cocoa pod ash, palm ash, shea butter, honey, lime juice, lemon juice, aloe vera, and camwood. See Id. at 47:9-48:3; Ex. D-34.

         12. Mr. Ogunrinde testified that he developed the name DUDU OSUN by taking the words for "black" and "camwood" from Nigeria's four major languages[4] and testing those words in different combinations to see how they would be received by consumers. See Trial Tr. Day 2 at 48:12-50:5. Mr. Ogunrinde eventually settled on the combination of "dudu," which means "black" in Yoruba, and "osun," which means "camwood" in Yoruba. See id.

         13. Mr. Ogunrinde presented multiple photographs of how the DUDU OSUN mark originally looked in the 1990's. See Id. at 52:17-53:5; Exs. D-12A through D.

         14. He explained that he chose the grass logo-located next to the DUDU OSUN mark on Ex. D-12A-to represent the "herbal" nature of the black soap. See Trial Tr. Day 2 at 52:17-53:2. He further explained that he did not design the grass logo; rather, he picked it from clip art on his computer. See Id. at 52:19-24.

         15. Mr. Ogunrinde testified that Tropical changed the packaging for its DUDU OSUN soap in 2007. See Trial Tr. Day 2 at 56:8-57:16. At that time, it transitioned from the original brown-and-white box to the green box presently in use today. See id.; Exs. D-8 and D-34.

         2. Tropical's Use of the DUDU OSUN Mark in United States Commerce

         16. Mr. Ogunrinde testified that third-parties who bought Tropical's DUDU OSUN soap in Nigeria began importing it into the United States in 1996. See Trial Tr. Day 2 at 15:4- 16:1; 63:13-18.

         17. Mr. Ogunrinde admitted, however, that his earliest documentation of Tropical shipping products directly into the United States is from 2001, some five years after he had actually imported the products into the United States. He claimed that Tropical has been selling DUDU OSUN soap in the United States ever since. See Id. at 15:4-16:16.

         18. Tropical supported Mr. Ogunrinde's testimony with one invoice from December 2001 reflecting a shipment of one hundred cartons-4, 800 bars-of Tropical's DUDU OSUN soap to International Beauty Care Company, a distributor in California. See Id. at 65:15-66:6; Ex. D-17A.

         19. Dr. Churchill Idah, who operates International Beauty Care Company, testified that he has been importing DUDU OSUN soap manufactured by Tropical for sale in the United States continuously from 2001 through the present. See Trial Tr. Day 3 at 35:4-11. He further testified that, since that time, he has sold Tropical's DUDU OSUN soap to distributors nationwide, see Id. at 35:12-36:14, who then sell the soap to retailers, who in turn sell the soap to consumers. See Id. at 36:23-37:1.

         20. The parties stipulated that International Beauty Care Company "has been distributing [DUDU OSUN] branded soap throughout the United States as manufactured by Cosmos Chemicals and later by Tropical Naturals at least on or around the dates reflected upon Defendant's Exhibits D-2A through Y, D-4A and B, and D-17A." Trial Tr. Day 3 at 29:21-30:7 (emphasis added).

         21. The exhibits referenced in that stipulation show the importation of over 150, 000 bars of Tropical's DUDU OSUN soap from December 14, 2001 through April 27, 2016. The earliest invoice is the December 2001 invoice, see Ex. D-17A, the next invoice is from February 2008, see Ex. D-2W, and the remainder of the invoices are dated between 2008 and 2016. See Exs. D-2A through Y, D-4A and B.

         22. Tropical also presented documentation of a sale of 48, 000 bars of soap to a different distributor in Virginia in May 2002 for $28, 479.00. See Trial Tr. Day 2 at 66:7-68:15; Ex. D-17B.

         23. Although Tropical did not present any invoices demonstrating sales between May 2002 and February 2008, it presented other evidence of continued use of the DUDU OSUN mark in the United States during those years.

         24. For example, Tropical's DUDU OSUN soap was advertised in the United States in the Africa Imports catalog in the Fall/Winter 2002 and Summer 2004 editions. See Trial Tr. Day 2 at 69:2-70:16; Ex. D-1A and B. Tropical's DUDU OSUN soap was also advertised in the Africa Imports catalog in the Spring 2009 and Spring 2011 editions. See Trial Tr. Day 2 at 70:17-71:15; Exs. D-lCandD.

         25. The Africa Imports catalog was distributed "all over the United States." See Trial Tr. Day 2 at 69:20-22.

         26. Mr. Ogunrinde also testified that he received several letters from customers in the United States who expressed their appreciation for DUDU OSUN soap or their desire to purchase more of the product. See Trial Tr. Day 2 at 77:14-85:10. The following correspondence was admitted into evidence:

i. An August 2002 letter from a customer in Kansas, see Ex. D-14E;
ii. An August 2003 e-mail from a customer in Delaware, see Ex. D-14D;
iii. A February 2004 letter from a customer in Florida, see Ex. D-14A;
iv. An April 2004 letter from a customer in Ohio, see Ex. D-14B;
v. A July 2005 letter from a customer in New York, see Ex. D-14C;
vi. A September 2005 letter from a customer in Pennsylvania, see Ex. D-14F; and
vii. A January 2007 letter from a customer in California. See Ex. D-13B.

         27. Tropical presented an unobjected to letter from Deloitte, its outside auditor, which stated that, from December 2013 through the end of 2017, Tropical had $218, 090.00 worth of sales of DUDU OSUN soap in the United States. See Trial Tr. Day 2 at 28:18-30:7; Ex. P-8.

         28. Mr. Ogunrinde testified-and submitted a cumulative sworn declaration stating- that Tropical's sales of DUDU OSUN soap in the United States for 2018 through February 2019 were approximately $802, 575.00. See Trial Tr. Day 2 at 30:8-31:7.

         B. Mr. Maduka

         29. At trial, Mr. Maduka presented evidence purporting to show his use of both the DUDU OSUN mark and the DUDU OSUM mark. See Trial Tr. Day 1 generally.

         1. Origin of the DUDU OSUN and DUDU OSUM Marks

          30. Mr. Maduka testified that his family has been making black soap in his native village in Nigeria for generations. See Trial Tr. Day 1 at 11:9-24.

         31. He claimed that he started manufacturing black soap and other beauty products for sale in Nigeria in 1983. See Id. at 16:25-17:5.

         32. He testified that he came up with the idea to use the name DUDU OSUN because the people in his native village referred to black soap by that name. See Id. at 12:16-24. He testified that he created the name DUDU OSUM to differentiate between solid soap-for which he uses the DUDU OSUN mark-and liquid products (like liquid hand soap, shampoo, and conditioner)-for which he uses the DUDU OSUM mark. See Id. at 13:1-3.

         33. Mr. Maduka, however, did not mention using DUDU OSUN for solid products and DUDU OSUM for liquid products in his responses to Tropical's pre-trial discovery interrogatories about the origins of the names.

         34. Instead, in response to interrogatories, Mr. Maduka stated that he developed the name DUDU OSUN because, in Nigerian street language or slang, "dudu" means "funky," and "osun" means "camwood." See Id. at 43:20-45:20. And Mr. Maduka stated that he used the name DUDU OSUM because it conveyed that his products were "awesome." See Id. at 45:21-45:25.

         35. On cross-examination, Mr. Maduka also admitted that he has labeled several liquid products with the DUDU OSUN mark, thus contradicting his explanation for why he labeled some products as DUDU OSUN and some as DUDU OSUM. See Id. at 47:4-50:9; 54:1-3; see also Exs. D-21B and C (depicting Mr. Maduka's use of the DUDU OSUN mark on liquid products).

         36. Mr. Maduka attempted to downplay this inconsistency, explaining that he generally follows the solid and liquid distinctions in his labeling practices for purposes of "strategic marketing," see Trial Tr. Day 1 at 51:13-17, but that he sometimes allows his customers to decide whether they want the products they are purchasing to be labeled DUD OSUN, DUDU OSUM, or with some other name. See Id. at 59:14-21.[5]

         37. This general lack of consistency rendered Mr. Maduka's testimony about the origins of the marks problematic.

         38. Mr. Maduka testified that he designed the grass logo that appears on his DUDU OSUM products himself with assistance from family members. See Trial Tr. Day 1 at 80:20-81:2; Ex. P-l. Mr. Maduka further testified that he did not use the grass logo until around 2005. See Id. at 74:17-20.

         39. However, as discussed above, Tropical presented photographic evidence that it was using a nearly identical grass logo on its DUDU OSUN products in Nigeria in 1999, see Trial Tr. Day 2 at 52:2-53:6; Ex. D-12A, as well as in industry periodicals circulated in the United States beginning in 2002. See Trial Tr. Day 2 at 69:8-70:6; Ex. D-l A.

         40. This timeline of events, the close resemblance between Mr. Maduka's and Tropical's grass logos, compare Ex. P-l to Ex. D-l2A, and the fact that Mr. Maduka offered no actual explanation as to how he developed the grass logo, greatly undermines the claim that Mr. Maduka originated the logo.

         41. Mr. Maduka's black soap contains several of the same ingredients as Tropical's black soap, including palm ash, lemon juice, lime juice, and shea butter, but it also has additional ingredients that are not included in Tropical's soap, including plantain pulp and mango butter. See Trial Tr. Day 3 at 15:9-16:19.

         2. Mr. Maduka's Use of the Marks in United States Commerce

         42. Mr. Maduka owns several companies through which he manufactures and sells black soap and other beauty and skin care products, including Apure, USA Africa Trade and Development Corp., and Success Products USA. See Trial Tr. Day 1 at 10:9-11:8; 29:18-30:3.

         43. Referencing two invoices, Mr. Maduka testified that he first used the DUDU OSUN mark to sell black soap in the United States in 1986. See Id. at 24:3-27:25; Ex. P-6 at MDK-0009, MDK-0108. Mr. Maduka further testified that he has used the DUDU OSUN mark in United States commerce continuously since 1986. See Trial Tr. Day 3 at 52:12-25.

         44. However, the invoices Mr. Maduka offered to support his claims were only faintly legible photographs of purported invoices, not copies of the invoices themselves. See Ex. P-6 at MDK-0009, MDK-0108.[6]

         45. Moreover, only one of the invoices from 1986 used the name "Dudu Osun" to identify Mr. Maduka's black soap. See Id. at MDK-0108.

         46. The other invoice from 1986 identified Mr. Maduka's black soap as "Apure Dudu Black Soap," not "Dudu Osun." See Id. at MDK-0009.

         47. Even considering all of the products identified as "Dudu," the two invoices from 1986 account for no more than $72 worth of sales. See Id. at MDK-0009; MDK-0108.

         48. After the 1986 invoices, the earliest invoice that Mr. Maduka offered into evidence is from December 2000. See Id. at MDK-0212; Trial Tr. Day 1 at 84:5-21.

         49. The December 2000 invoice does not identify Mr. Maduka's black soap as "Dudu Osun." Rather, it identifies his black soap as "Dudu Raw Africa Black Soap," "Apure Dudu Raw Black Soap (Balls)," and "APure Dudu Liquid Black Soap." See Ex. P-6 at MDK-0212.

         50. Mr. Maduka produced two invoices from 2001. See id at MDK-0059, MDK-0220.

         51. Only one of these invoices identified Mr. Maduka's product as "Dudu Osun." See Id. at MDK-0220.

         52. The other 2001 invoice identified Mr. Maduka's product as "APure Dudu Black soap." See Id. at MDK-0059.

         53. Even considering all of the products identified as "Dudu," the three invoices from 2000 and 2001 account for only $2, 089.26 worth of sales.

         54. Mr. Maduka produced one invoice each from 2009, 2010, 2011, 2012, and 2014. See Id. at MDK-0190, MDK-0199, MDK-0202, MDK-0205, and MDK-0195.

         55. The 2009 and 2014 invoices showed sales of DUDU OSUM products. See Id. at MDK-0190, MDK-0195.

         56. The 2012 invoice showed sales of DUDU OSUN products. See Id. at MDK-0205.

         57. The 2010 and 2011 invoices showed sales of both DUDU OSUN and DUDU OSUM products. See Id. at MDK-0199, MDK-0202; Trial Tr. Day 1 at 83:5-84:4.

         58. Combined, these invoices show less than $40, 000 in sales for all "DUDU"-related products.

         59. To the extent Mr. Maduka testified to use of the marks in the gaps between the times for which he actually presented invoices, that testimony was not credible because of the lack of documentation, because of the low volume of sales in the invoices actually presented, and because he lacked any other supporting evidence of use of the marks during those times, such as photographs, advertisements, letters from consumers, storage or bills of lading or other records of use of the marks in the ordinary course of trade.[7]

         60. Mr. Maduka testified that he has over 30-years' worth of boxes containing thousands of invoices for the sales of DUDU OSUN and DUDU OSUM products in the United States from the 1980's forward, but that, going through his file boxes, he "just picked the items that [he] could fit into [a] package." See Trial Tr. Day 1 at 30:4-31:13.[8]

         61. The Court also notes that this case started in February 2017, and over the ensuing years the Court granted Mr. Maduka multiple extensions of time due to his change of counsel, and the Court even allowed his substitute counsel some limited discovery after the discovery completion deadline so he could obtain additional documents. In short, Mr. Maduka had an extended opportunity to gather and present his evidence.

         62. Beginning around 2012, Mr. Maduka's son, Agu Maduka, has sold Mr. Maduka's DUDU OSUN and DUDU OSUM products online at duduosum.com. See Stipulations of Fact at ¶¶ 13-14.

         63. Although Mr. Maduka does not manage duduosum.com, he gives his son-and his son's business partners-"guidelines" on how to manage Mr. Maduka's products and how to run the website. See Trial Tr. Day 1 at 73:1-9.

         64. He also gives his son and his son's partners "instructions on how to protect [his purported] trademark." See Id. at 74:24-25.

         65. Mr. Maduka testified that his son and his son's partners are contractually obligated to follow Mr. Maduka's instructions. See Id. at 75:5-11.

         66. Mr. Maduka's son and his son's partners also sell Tropical's DUDU OSUN branded African black soap on the duduosum.com website. See Id. at 73:10-74:13; Ex. D-9B.

         3. Mr. Maduka's Relabeling of his Products

         67. Mr. Maduka testified that he sometimes relabels his products by affixing label stickers over pre-existing packaging. See Trial Tr. Day 1 at 58:3-16.

         68. Mr. Maduka explained that he has labels that are pre-printed with the DUDU OSUN mark, and that he also has blank labels that he can use to apply a different mark, like the Apure mark. See Id. at 60:5-9.

         69. Mr. Maduka and his staff can print these labels in-house using a ...


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