United States District Court, E.D. Pennsylvania
C. CHRIS MADUKA, Plaintiff
TROPICAL NATURALS, LTD., Defendant
E. K. Pratter United States District Judge
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. 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.
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.
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
(2) Tropical, not Mr. Maduka, is the owner of the DUDU OSUN
(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.
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.
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.
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.
Maduka and Tropical both sell soap products, including bar
soap, known in the soap industry as "African black
soap." See Id. at ¶ 1.
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.
The Parties' Use of the Disputed Marks
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.
Origin of the DUDU OSUN Mark
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.
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.
Following his work at Unilever, Mr. Ogunrinde founded Cosmos
Chemicals- Tropical's predecessor in
interest-where he first began to manufacture and
sell fillers for paint and tile in 1991. See Id.
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.
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.
Ogunrinde testified that he developed the name DUDU OSUN by
taking the words for "black" and
"camwood" from Nigeria's four major
languages 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.
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.
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.
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.
Tropical's Use of the DUDU OSUN Mark in United States
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.
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.
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.
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.
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).
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.
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.
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.
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.
Africa Imports catalog was distributed "all over the
United States." See Trial Tr. Day 2 at
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
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.
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.
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
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.
Origin of the DUDU OSUN and DUDU OSUM Marks
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.
claimed that he started manufacturing black soap and other
beauty products for sale in Nigeria in 1983. See Id.
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.
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.
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.
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
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
This general lack of consistency rendered Mr. Maduka's
testimony about the origins of the marks problematic.
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.
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.
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
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.
Mr. Maduka's Use of the Marks in United States
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
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
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.
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.
other invoice from 1986 identified Mr. Maduka's black
soap as "Apure Dudu Black Soap," not "Dudu
Osun." See Id. at MDK-0009.
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;
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.
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.
Maduka produced two invoices from 2001. See id at
Only one of these invoices identified Mr. Maduka's
product as "Dudu Osun." See Id. at
other 2001 invoice identified Mr. Maduka's product as
"APure Dudu Black soap." See Id. at
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.
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.
2009 and 2014 invoices showed sales of DUDU OSUM products.
See Id. at MDK-0190, MDK-0195.
2012 invoice showed sales of DUDU OSUN products. See
Id. at MDK-0205.
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.
Combined, these invoices show less than $40, 000 in sales for
all "DUDU"-related products.
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.
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
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.
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
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.
also gives his son and his son's partners
"instructions on how to protect [his purported]
trademark." See Id. at 74:24-25.
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.
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.
Mr. Maduka's Relabeling of his Products
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.
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.
Maduka and his staff can print these labels in-house using a