     Case: 10-40048 Document: 00511408469 Page: 1 Date Filed: 03/11/2011




           IN THE UNITED STATES COURT OF APPEALS
                    FOR THE FIFTH CIRCUIT  United States Court of Appeals
                                                    Fifth Circuit

                                                 FILED
                                                                           March 11, 2011

                                       No. 10-40048                         Lyle W. Cayce
                                                                                 Clerk

MINI MELTS, INCORPORATED,

                                           Plaintiff - Appellant - Cross-Appellee
v.

RECKITT BENCKISER, INCORPORATED,

                                           Defendant - Appellee - Cross-Appellant




                   Appeals from the United States District Court
                         for the Eastern District of Texas
                               USDC No. 4:07-cv-271


Before BARKSDALE, CLEMENT, and PRADO, Circuit Judges.
PER CURIAM:*
       Under a federally registered trademark, Mini Melts, Incorporated,
markets small, cryogenically frozen pieces of ice cream: MINI MELTS ® . Reckitt
Benckiser, Incorporated, markets, inter alia, a granulated form of Mucinex ®
cough and cold medicine for children: Children’s Mucinex Mini-Melts. A jury
trial was held on Mini Melts’ trademark-infringement and unfair-competition
claims against Reckitt, pursuant to 15 U.S.C. § 1114, and Reckitt’s counterclaim
seeking cancellation of Mini Melts’ trademark due to fraud, pursuant to 15

       *
         Pursuant to 5TH CIR . R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR .
R. 47.5.4.
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                                    No. 10-40048

U.S.C. § 1064; a subsequent bench trial, on Mini Melts’ claim for trademark
dilution by tarnishment, pursuant to T EX. B US. & C OM. C ODE A NN. § 16.29.
      On 25 June 2009, the jury found:         Mini Melts had not made a false
representation in obtaining its trademark; but Reckitt had not used that mark
in a manner likely, inter alia, to cause confusion or mistake. For the subsequent
bench trial, at which the evidence from the jury trial, as well as additional
evidence, was considered, and pursuant to 21 December 2009 findings of fact and
conclusions of law, the district court ruled in favor of Reckitt, ruling, inter alia:
“[Reckitt’s] marketing of its cough and cold medicine Children’s Mucinex Mini-
Melts has not and is not likely to tarnish [Mini Melts’] reputation[; and Reckitt]
has not diluted, nor is there a likelihood of dilution of, the MINI MELTS ® mark
pursuant to the Texas anti-dilution statute”.         Mini Melts, Inc. v. Reckitt
Benckiser, Inc., No. 4:07-cv-271, doc. 240 (findings of fact & conclusions of law)
(E.D. Tex. 21 Dec. 2009).
      Mini Melts contends the district court erred: in the jury trial, by not
including danger of product confusion and safety considerations in the
trademark-infringement jury instructions; and, in the bench trial, by both
requiring a higher standard of distinctiveness for tarnishment and concluding
that Reckitt had not tarnished Mini Melts’ trademark and that Mini Melts had
not suffered injury to its business reputation and trademark. Reckitt counters,
inter alia, that Mini Melts’ federal trademark registration should be canceled.
(Because we uphold that portion of the 22 December 2009 final judgment
regarding the jury’s finding against Mini Melts, we need not reach Reckitt’s
cancellation-of-trademark-registration claim.) Pursuant to our review of the
briefs and pertinent parts of the record, and having heard the arguments of the
parties, Mini Melts’ claims fail.
      The district court did not abuse its discretion by refusing the instruction
because, inter alia, on this record, safety considerations and danger to public
health were not within the factors to be considered in deciding likelihood of

                                          2
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                                  No. 10-40048

confusion vel non. And, essentially for the reasons stated in its findings of fact
and conclusions of law, the district court did not err in ruling against Mini Melts’
claim under the Texas anti-dilution statute.
      AFFIRMED.




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