CONFIDENTIAL — INTERNAL MEMORANDUM
CALDERWOOD & HARKNESS LLP 1251 Avenue of the Americas, 40th Floor New York, NY 10020
FILE CLOSING MEMORANDUM
Date: May 30, 2023
Prepared by: Peter Vassiliev, Associate, intellectual Property Group
Approved by: Alan Ngo, Responsible Partner, intellectual Property Group
Matter No.: 1011-00003
Billing Code: 11470-001
Client: Meridian Consumer Brands LLC
Matter Description: Trademark Infringement and Coexistence Dispute — Meridian Consumer Brands LLC v. Brindoval Home Goods Inc.
Matter Status: CLOSED — COMPLETED
This memorandum is a confidential internal work product of Calderwood & Harkness LLP prepared for the purpose of documenting the closing of Matter No. 1011-00003. This document is protected by the attorney-client privilege and the work product doctrine. It is intended solely for internal firm use and should not be disclosed to any person or entity outside the firm without the prior written authorization of the Responsible Partner.
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1. Matter Summary
This memorandum documents the opening, progression, resolution, and closing of Matter No. 1011-00003, a federal trademark infringement action and related Trademark Trial and Appeal Board ("TTAB") opposition proceeding handled by the intellectual Property Group of Calderwood & Harkness LLP ("C&H" or the "Firm") on behalf of Meridian Consumer Brands LLC.
Client: Meridian Consumer Brands LLC ("MCB"), a Delaware limited liability company, headquartered at 450 Park Avenue South, 14th Floor, New York, NY 10016; EIN 83-4027165. MCB is a consumer packaged goods company operating nationally in the household cleaning, personal care, and home fragrance categories.
Client Contact: Thomas R. Hennessy, General Counsel, Meridian Consumer Brands LLC. Mr. Hennessy served as the primary client contact throughout the engagement, with day-to-day operational input provided at various stages by Rachel Dominguez, VP, Brand Management.
Adverse Party: Brindoval Home Goods Inc. ("Brindoval" or "CHG"), a Minnesota corporation, headquartered at 7200 France Avenue South, Suite 300, Edina, MN 55435; EIN 41-2091487. Brindoval is a regional big-box home goods retailer operating brick-and-mortar stores and a growing e-commerce platform throughout the Midwest and Mountain West regions.
Adverse Counsel: Halverson McKay & Pruitt LLP, 225 South Sixth Street, Suite 4200, Minneapolis, MN 55402. The Brindoval engagement team consisted of Gregory T. Halverson, Lead Partner; Megan Janssen, Senior Associate; and David Kowalski, Associate. Mr. Halverson served as the primary point of contact for all substantive communications and settlement negotiations.
Nature of Matter: This matter arose from Brindoval's adoption and commercial use, commencing in approximately July 2022, of the mark "MERIDIAN FRESH" for a private-label household cleaning product line in International Class 3. MCB alleged that Brindoval's mark infringed MCB's portfolio of registered trademarks, specifically:
(a) MERIDIAN (standard character), U.S. Registration No. 4,218,506 (International Class 3 — household cleaning products);
(b) MERIDIAN CLEAN (standard character), U.S. Registration No. 5,034,771 (International Class 3 — household cleaning products); and
(c) MERIDIAN stylized logo with wave device (design mark), U.S. Registration No. 5,589,320 (International Class 3 — household cleaning products).
The dispute encompassed both a federal court action filed in the United States District Court for the Southern District of New York and a TTAB opposition proceeding against Brindoval's pending trademark application. The matter was resolved through negotiation and execution of a comprehensive Trademark Coexistence Agreement, followed by dismissal of all litigation proceedings with prejudice.
Matter Opened: September 26, 2022
Matter Closed: May 30, 2023
Duration: Approximately eight (8) months from opening to closing. The matter progressed through pre-litigation, litigation (including a preliminary injunction motion), mediation, settlement negotiation, and closing/dismissal phases.
2. Engagement Team
The following attorneys comprised the C&H engagement team for this matter. All timekeepers are members of the Firm's intellectual Property Group.
Total hours billed across all timekeepers: 830 hours.
No paralegals, law clerks, or contract attorneys were separately billed to this matter. Administrative support was absorbed within the Firm's standard overhead allocation. Expert and mediator engagements are detailed separately in Sections 6 and 7 below.
3. Background and Client Profile
3.1 Meridian Consumer Brands LLC (MCB)
Meridian Consumer Brands LLC is a consumer packaged goods company operating across three principal product verticals: household cleaning products, personal care products, and home fragrance products. MCB's products are distributed through major grocery retailers, club stores, and e-commerce channels in all fifty (50) states. The company is organized as a Delaware limited liability company and maintains its principal office at 450 Park Avenue South, 14th Floor, New York, NY 10016.
For the fiscal year ended December 31, 2022, MCB reported total revenue of approximately $387 million. The MERIDIAN-branded cleaning product line — the product line at issue in this matter — generated approximately $94.5 million in revenue during FY 2022, representing approximately 24.4% of total company revenue. The MERIDIAN cleaning line encompasses a range of household cleaning products, including all-purpose sprays, glass and surface cleaners, disinfecting wipes, dish soaps, and bathroom cleaning solutions.
MCB has used the MERIDIAN mark in interstate commerce for household cleaning products continuously since approximately 2011, establishing over a decade of continuous and substantially exclusive use in the relevant product category. During the period from 2011 through 2022, MCB's cumulative advertising expenditure for MERIDIAN-branded cleaning products totaled approximately $47.2 million, yielding an average annual advertising spend of approximately $3.93 million. These figures, documented in the Declaration of Rachel Dominguez filed in support of MCB's preliminary injunction motion, supported the Firm's argument that the MERIDIAN mark has acquired significant strength and consumer recognition in the household cleaning product marketplace.
MCB's majority equity holder is Waypoint Capital Partners LLC, a Delaware limited liability company headquartered at 590 Madison Avenue, 22nd Floor, New York, NY 10022 (Managing Partner: James Alderton). Waypoint Capital Partners acquired MCB in 2019 in a leveraged acquisition valued at approximately $625 million. The brand equity of the MERIDIAN cleaning line was understood by the engagement team to be a significant driver of MCB's enterprise value and a core asset from the perspective of Waypoint Capital Partners' investment thesis. This context informed the client's strong interest in aggressively protecting the MERIDIAN mark and its willingness to invest in litigation to protect the brand.
MCB's key personnel relevant to this matter include:
• Sandra Kwan, Chief Executive Officer;
• Thomas R. Hennessy, General Counsel (primary client contact);
• Rachel Dominguez, Vice President, Brand Management (provided declarations and brand data in support of litigation).
3.2 Brindoval Home Goods Inc. (Brindoval)
Brindoval Home Goods Inc. is a regional big-box home goods retailer incorporated in Minnesota and headquartered at 7200 France Avenue South, Suite 300, Edina, MN 55435. As of the period relevant to this matter, Brindoval operated 148 retail stores across twelve (12) Midwestern and Mountain West states. Brindoval has also developed a growing e-commerce platform accessible at www.crestviewhomegoods.com. For FY 2022, Brindoval reported total revenue of approximately $2.1 billion.
In approximately July 2022, Brindoval launched a private-label household cleaning product line marketed under the mark "MERIDIAN FRESH." The product line included all-purpose spray, glass cleaner, disinfecting wipes, and dish soap — all product categories in which MCB's MERIDIAN mark is registered and used. Brindoval's MERIDIAN FRESH product line featured a teal-and-white color scheme and a stylized wave device that bore a significant visual resemblance to MCB's registered MERIDIAN stylized logo with wave device (U.S. Reg. No. 5,589,320).
In advance of the product launch, Brindoval had filed U.S. trademark application Serial No. 97/412,558 for MERIDIAN FRESH (standard character mark, International Class 3) on May 12, 2022. The application was published for opposition in the USPTO Official Gazette on September 6, 2022, triggering the thirty-day opposition period and prompting MCB's engagement of this Firm.
During the period from July through November 2022, Brindoval's MERIDIAN FRESH line generated approximately $6.8 million in gross revenue, with an annualized projection of approximately $16.3 million. These figures were obtained through initial disclosures and informal discovery exchanges during the litigation.
Key Brindoval personnel identified in the course of the matter include Douglas P. Lindstrom (CEO), Karen A. Whitfield (General Counsel), and Nathan Cho (Vice President).
4. Procedural History
The following is a detailed chronological account of the material events in this matter, organized by phase.
4.1 Pre-Litigation Phase (September–November 2022)
September 26, 2022 — Matter Opened; Cease-and-Desist Letter Sent. C&H opened this matter upon the instruction of Thomas R. Hennessy, General Counsel of MCB, following MCB's discovery that Brindoval's MERIDIAN FRESH trademark application had been published for opposition in the USPTO Official Gazette on September 6, 2022. On the same date, C&H transmitted a detailed cease-and-desist letter, prepared by Christy Bauer and reviewed by Alan Ngo, addressed to Karen A. Whitfield, General Counsel, Brindoval Home Goods Inc. The letter demanded that Brindoval (a) immediately cease all use of the mark MERIDIAN FRESH and associated trade dress in connection with household cleaning products, (b) withdraw pending trademark application Serial No. 97/412,558, and (c) confirm compliance in writing within ten (10) business days. The letter set forth MCB's trademark registrations, the history of MCB's use of the MERIDIAN mark, and the Firm's preliminary assessment of the likelihood of confusion between the parties' marks. The letter also reserved all rights and remedies available to MCB under the Lanham Act and applicable state law.
October 5, 2022 — Expert Engagement. C&H executed an expert engagement letter with Lakeshore Brand Consulting LLC for the services of Dr. Elaine Furman, Ph.D., Principal (333 West Wacker Drive, Suite 1100, Chicago, IL 60606). Dr. Furman was retained to design and conduct a consumer confusion survey employing a modified Eveready protocol (Squirt-design methodology), as well as to prepare a brand-valuation and damages analysis in support of potential litigation. The engagement was subject to a fixed fee of $87,500, inclusive of survey design, fieldwork, data analysis, and preparation of an expert report. Dr. Furman's qualifications and prior expert engagement history were reviewed and approved by Alan Ngo. The engagement was authorized by Thomas R. Hennessy on behalf of MCB.
October 10, 2022 — Response from Adverse Counsel. Halverson McKay & Pruitt LLP, acting on behalf of Brindoval, responded to C&H's cease-and-desist letter by letter dated October 10, 2022. The response, signed by Gregory T. Halverson, denied that Brindoval's use of the MERIDIAN FRESH mark constituted trademark infringement or was likely to cause consumer confusion. Mr. Halverson's letter contended that the word "meridian" is suggestive or descriptive for cleaning products and that the addition of the word "fresh" and the distinct overall commercial impression of Brindoval's mark and packaging distinguished it from MCB's registrations. Brindoval declined to cease use and declined to withdraw application Serial No. 97/412,558. The Firm reported Brindoval's response to Mr. Hennessy by letter dated October 12, 2022, and recommended proceeding with both a TTAB opposition and a federal court action.
October 14, 2022 — TTAB Opposition Filed. C&H filed a Notice of Opposition before the Trademark Trial and Appeal Board on behalf of MCB, initiating Opposition No. 91/278,415 against Brindoval's pending application Serial No. 97/412,558 for MERIDIAN FRESH (standard character, International Class 3). The Notice of Opposition identified MCB's three registered marks, set forth the factual and legal basis for MCB's opposition, and requested that the Board sustain the opposition and refuse registration of Brindoval's mark. The filing fee of $600 was remitted to the USPTO.
October 2022 — Consumer Confusion Survey. During October 2022, Dr. Furman designed and conducted a consumer confusion survey in accordance with the modified Eveready protocol (Squirt-design methodology). The survey was administered to a nationally representative sample of 612 respondents who had purchased household cleaning products within the prior twelve (12) months. The survey results demonstrated a raw confusion rate of 38.6%, meaning that approximately four in ten respondents associated the MERIDIAN FRESH mark and packaging with the source of MCB's MERIDIAN-branded cleaning products or believed the marks originated from the same or related sources. After adjusting for control-group noise of 7.2%, the net confusion rate was 31.4%. This result substantially exceeded the threshold that courts in the Second Circuit have recognized as probative of actual consumer confusion in trademark infringement cases. Dr. Furman's findings were memorialized in a written report and subsequently submitted in the form of a sworn declaration in support of MCB's motion for preliminary injunction.
4.2 Litigation Phase (November 2022–January 2023)
November 7, 2022 — Complaint Filed. C&H filed a Complaint on behalf of MCB in the United States District Court for the Southern District of New York, commencing the action styled Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Case No. 1:22-cv-09483. The case was assigned to the Honorable Patricia M. Albright. The Complaint asserted three causes of action:
(1) First Cause of Action: Trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), based on Brindoval's unauthorized use of the MERIDIAN FRESH mark and confusingly similar trade dress in connection with household cleaning products that are identical to those covered by MCB's registrations;
(2) Second Cause of Action: False designation of origin and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), based on Brindoval's use of the MERIDIAN FRESH mark and trade dress elements (including the teal-and-white color scheme and wave device) that are likely to cause confusion, mistake, or deception as to the source, sponsorship, or affiliation of Brindoval's products; and
(3) Third Cause of Action: Trademark dilution under New York General Business Law § 360-l, based on the likelihood that Brindoval's use of the MERIDIAN FRESH mark would blur or tarnish the distinctive quality of MCB's MERIDIAN marks.
The Complaint sought injunctive relief, damages, an accounting of profits, treble damages, attorneys' fees, and costs. It was accompanied by the standard civil cover sheet, corporate disclosure statement, and summons. Service of process was effected upon Brindoval through its registered agent, Northland Statutory Services Inc., at 100 South Fifth Street, Minneapolis, MN 55402.
November 18, 2022 — Motion for Preliminary Injunction Filed. C&H filed a Motion for Preliminary Injunction on behalf of MCB, seeking an order enjoining Brindoval from using the MERIDIAN FRESH mark and associated trade dress pending trial. The motion was supported by the following papers:
(a) Memorandum of Law in Support of Motion for Preliminary Injunction, analyzing the four-factor preliminary injunction standard applicable in the Second Circuit (Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010)) and the multifactor likelihood-of-confusion test (Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)), with particular emphasis on the strength of MCB's marks, the proximity of the products, the similarity of the marks, the evidence of actual confusion from the consumer survey, the sophistication of consumers in the low-cost household cleaning product category, and the quality of Brindoval's products;
(b) Declaration of Rachel Dominguez, VP, Brand Management, MCB, attesting to MCB's history of use, sales figures, advertising expenditures, distribution channels, brand awareness metrics, and the competitive harm caused by Brindoval's adoption of the MERIDIAN FRESH mark;
(c) Declaration of Dr. Elaine Furman, Ph.D., attaching the complete Consumer Confusion Survey Report, including methodology, survey instrument, data tables, and conclusions (31.4% net confusion rate); and
(d) Proposed Order Granting Preliminary Injunction.
December 5, 2022 — Answer and Counterclaim Filed. Brindoval, through Halverson McKay & Pruitt LLP, filed its Answer to the Complaint, denying the material allegations and asserting various affirmative defenses, including that the MERIDIAN mark is weak and suggestive in the household cleaning product category, that no likelihood of confusion exists, and that MCB cannot demonstrate irreparable harm. Brindoval simultaneously filed a Counterclaim seeking a declaratory judgment of non-infringement under the Declaratory Judgment Act, 28 U.S.C. §§ 2201–2202, requesting that the Court declare Brindoval's use of MERIDIAN FRESH does not infringe MCB's trademarks.
In connection with its opposition to the preliminary injunction, Brindoval retained Pinnacle Research Group Inc. (Dr. Ronald Trask, Ph.D., 801 Marquette Avenue, Suite 900, Minneapolis, MN 55402) to conduct a rebuttal survey. Dr. Trask submitted a declaration critiquing the methodology of Dr. Furman's survey, challenging the survey universe, question design, and interpretation of results, and presenting rebuttal survey data showing lower confusion rates. The engagement team assessed Dr. Trask's critiques and prepared responsive arguments for the hearing.
December 19, 2022 — Preliminary Injunction Hearing. Judge Albright held an evidentiary hearing on MCB's Motion for Preliminary Injunction. Alan Ngo presented oral argument on behalf of MCB. Gregory T. Halverson argued on behalf of Brindoval. The hearing lasted approximately three hours and included argument on the Polaroid factors, the admissibility and weight of the competing survey evidence, the adequacy of MCB's showing of irreparable harm, and the balance of hardships. The Court indicated it would take the matter under advisement.
January 9, 2023 — Order on Preliminary Injunction. Judge Albright issued her Order granting in part and denying in part MCB's Motion for Preliminary Injunction. The Court found:
(a) MCB demonstrated a likelihood of success on the merits with respect to its trade dress infringement claims, particularly the wave device and teal-and-white color scheme, which the Court found bore a "striking resemblance" to MCB's registered design mark (U.S. Reg. No. 5,589,320);
(b) The Court credited Dr. Furman's consumer confusion survey as methodologically sound and probative, noting the 31.4% net confusion rate, while finding Dr. Trask's criticisms "not persuasive on the core methodological questions";
(c) The Court ordered Brindoval to modify its packaging trade dress by removing the wave device and changing the teal-and-white color scheme within forty-five (45) days of the date of the Order;
(d) The Court declined to enjoin Brindoval's use of the word mark "MERIDIAN FRESH" pending trial, finding that the balance of hardships with respect to the word mark alone — given Brindoval's inventory investment, the arguable suggestiveness of the word "meridian" in the cleaning context, and the availability of a damages remedy — weighed against preliminary injunctive relief at this stage.
The partial grant of the preliminary injunction was a significant development that favorably positioned MCB for settlement negotiations, as it confirmed the Court's view that Brindoval's trade dress elements were likely infringing and signaled that the overall infringement claim had substantial merit. The Firm circulated an Internal Memorandum analyzing the Court's PI Order on January 11, 2023, and discussed its strategic implications with Mr. Hennessy.
January 23, 2023 — Initial Disclosures. The parties exchanged initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1). MCB's disclosures identified witnesses, documents, and damage computations. Brindoval's disclosures provided information regarding MERIDIAN FRESH product sales, revenue, inventory, and marketing expenditures, as well as identification of the key personnel involved in the mark selection and product launch process.
January 30, 2023 — Discovery Served. MCB served its First Set of Interrogatories (Nos. 1–25) and First Set of Requests for Production (Nos. 1–30) on Brindoval. The discovery requests were designed to elicit detailed information regarding Brindoval's mark-selection process, pre-launch trademark clearance efforts (if any), marketing strategy, revenue and profit data, distribution channels, and future product-expansion plans for the MERIDIAN FRESH line. Brindoval's responses to this discovery were not completed prior to the commencement of settlement negotiations and were ultimately mooted by the settlement.
4.3 Mediation and Settlement Negotiation Phase (February–May 2023)
February 15, 2023 — Court-Ordered Mediation. At the January case management conference, Judge Albright had referred the parties to mediation. The mediation was held on February 15, 2023, before the Honorable Harold K. Novotny (Ret.) of Novotny ADR Services LLC, 140 Broadway, Suite 2810, New York, NY 10005. Judge Novotny is a retired federal judge and experienced intellectual property mediator. Alan Ngo and Christy Bauer attended the mediation on behalf of MCB, together with Thomas R. Hennessy as the client representative. Gregory T. Halverson and Megan Janssen attended on behalf of Brindoval, accompanied by Karen A. Whitfield. The mediation session lasted a full day and resulted in a framework term sheet outlining the principal terms of a potential resolution, including the concept of a mark modification, channel restrictions, a one-time settlement payment, and dismissal of all proceedings. The parties agreed to continue negotiating the definitive terms of a Trademark Coexistence Agreement. The total mediation fee charged by Novotny ADR Services was $25,000, of which MCB's share was $12,500. C&H reported the mediation outcome to Mr. Hennessy by letter dated February 16, 2023.
The Firm prepared an Internal Memorandum dated February 28, 2023, setting forth proposed coexistence agreement terms and recommended negotiating positions for MCB's review and approval.
March 6 – April 28, 2023 — Negotiation of Definitive Coexistence Agreement. C&H transmitted the first draft of the Trademark Coexistence Agreement to Halverson McKay & Pruitt LLP on March 6, 2023. The following seven-week period involved multiple rounds of mark-up and counter-drafting between the parties' respective counsel. The engagement team tracked all open negotiation issues through a detailed Negotiation Issues Tracker spreadsheet (maintained from March 6 through April 28, 2023) and internal memoranda. The principal negotiation issues included:
(a) Settlement Amount: MCB initially demanded $2,500,000; Brindoval offered $750,000. The parties ultimately agreed upon $1,350,000, a figure that reflected, among other factors, the strength of MCB's litigation position following the Court's partial grant of the preliminary injunction, the costs of Brindoval's rebranding obligations, and the prospective value of continued (albeit restricted) use of the mark to Brindoval.
(b) Type-Size Requirement for "BRINDOVAL" Prefix: MCB sought a requirement that "BRINDOVAL" appear in 100% of the type size of "MERIDIAN FRESH." Brindoval resisted and initially proposed 50%. The parties compromised at 75%, as set forth in Section 3.1(b) of the executed agreement.
(c) Channel Restriction Scope: MCB sought an absolute restriction limiting Brindoval's use of the modified mark to in-store use only. Brindoval resisted, insisting on the inclusion of its own e-commerce platform. The final agreement permits use of the modified mark in Brindoval-branded retail stores and on Brindoval's own e-commerce platform (www.crestviewhomegoods.com), but prohibits use on any third-party retail platforms (e.g., Amazon, Walmart.com, Adriatic Corporation) or in wholesale distribution channels.
(d) Trade-Dress Review vs. Approval Right: MCB sought a prior-approval right over Brindoval's replacement trade dress. Brindoval resisted, asserting that an approval right would effectively grant MCB a veto over Brindoval's private-label branding. The parties agreed upon a review right — Brindoval must submit replacement trade dress to MCB at least thirty (30) days before commercial use, and MCB may raise objections, but the agreement does not require MCB's affirmative approval.
(e) Liquidated Damages Amount: MCB proposed $1,000,000 per occurrence for breach of the channel or product-category restrictions. Brindoval countered at $250,000. The parties agreed upon $500,000 per occurrence, plus actual damages, as set forth in Section 9.2 of the executed agreement.
(f) Quality Inspection Frequency: MCB sought the right to conduct quarterly quality inspections at Brindoval's facilities. Brindoval proposed biennial inspections. The parties agreed to annual product sample submissions by Brindoval and one (1) quality inspection per calendar year at Brindoval's facilities.
(g) Escrow Mechanics: The parties agreed that the settlement payment would be deposited into escrow with Dralvecen National Bank (Patricia Dolan, Escrow Officer; 60 East 42nd Street, New York, NY 10165) within ten (10) business days of execution of the Coexistence Agreement and released to MCB upon entry of the dismissal order by the Court.
(h) Scope of Application Amendment: The parties agreed that Brindoval must amend pending application Serial No. 97/412,558 to reflect the modified mark "BRINDOVAL MERIDIAN FRESH" and include a description of goods limited to "household cleaning preparations sold exclusively through Brindoval-branded retail and e-commerce channels."
(i) Rebranding Deadline Trigger: MCB sought a sixty (60) day rebranding window from execution. Brindoval argued that 180 days was necessary to allow for packaging redesign, inventory depletion, and supply chain adjustments. The parties settled on 120 days from execution, establishing a rebranding deadline of September 12, 2023.
C&H transmitted a final letter to Mr. Halverson responding to Brindoval's remaining mark-up comments on April 3, 2023. An Internal Memorandum analyzing the final open issues and the Firm's recommended positions was circulated on April 18, 2023. C&H transmitted a letter to Mr. Hennessy on May 8, 2023, summarizing the final agreed terms and recommending execution.
May 15, 2023 — Execution of Agreements. The Trademark Coexistence Agreement was fully executed on May 15, 2023, by Thomas R. Hennessy on behalf of MCB and Karen A. Whitfield on behalf of Brindoval. Simultaneously, the parties executed an Escrow Agreement among MCB, Brindoval, and Dralvecen National Bank (Patricia Dolan, Escrow Officer), governing the deposit and release of the $1,350,000 settlement payment.
4.4 Closing and Dismissal Phase (May 2023)
May 22, 2023 — Stipulation of Dismissal Filed. C&H and Halverson McKay & Pruitt LLP jointly filed a Stipulation of Dismissal with Prejudice in S.D.N.Y. Case No. 1:22-cv-09483, signed by Alan Ngo on behalf of MCB and Gregory T. Halverson on behalf of Brindoval. The stipulation provided that all claims asserted by MCB and all counterclaims asserted by Brindoval were dismissed with prejudice, with each party bearing its own costs and attorneys' fees except as set forth in the Trademark Coexistence Agreement. The stipulation was accompanied by a Proposed Order of Dismissal with Prejudice for the Court's consideration and requested that the Court retain jurisdiction solely for purposes of enforcement of the parties' settlement agreement.
May 22, 2023 — Withdrawal of TTAB Opposition. On the same date, C&H filed a Withdrawal of Notice of Opposition with Consent before the TTAB in Opposition No. 91/278,415. The withdrawal was filed with the consent of Brindoval and was contingent upon Brindoval amending its pending application Serial No. 97/412,558 to reflect the modified mark "BRINDOVAL MERIDIAN FRESH" and the agreed description-of-goods limitations set forth in the Coexistence Agreement.
May 30, 2023 — Court Enters Dismissal Order. The Honorable Patricia M. Albright entered the Order of Dismissal with Prejudice, dismissing all claims and counterclaims in Case No. 1:22-cv-09483 with prejudice. Consistent with the parties' request, the Court retained jurisdiction solely for the purpose of enforcement of the settlement embodied in the Trademark Coexistence Agreement.
May 30, 2023 — Escrow Release. Upon entry of the Court's Order of Dismissal with Prejudice, C&H transmitted an Escrow Release Instruction Letter to Dralvecen National Bank, directing release of the escrowed settlement funds. The full amount of $1,350,000 was released to MCB on May 30, 2023, in accordance with the terms of the Escrow Agreement.
May 30, 2023 — Matter Closed. C&H transmitted a closing letter to Thomas R. Hennessy summarizing the matter outcome, the terms of the Coexistence Agreement, MCB's ongoing obligations and monitoring responsibilities, and the Firm's recommendations for post-closing compliance. The final invoice and fee summary were transmitted concurrently. This File Closing Memorandum is prepared as of the same date.
5. Final Outcome — Trademark Coexistence Agreement Summary
The matter was resolved through the negotiation and execution of a Trademark Coexistence Agreement dated May 15, 2023 (the "Agreement"). The principal terms of the Agreement are summarized below. A complete copy of the execution version of the Agreement is included in the matter file.
Settlement Payment. Brindoval paid MCB a one-time lump-sum settlement payment of $1,350,000. The payment was deposited into escrow with Dralvecen National Bank within ten (10) business days of the execution of the Agreement and released to MCB upon entry of the Court's Order of Dismissal with Prejudice on May 30, 2023.
Mark Modification. Pursuant to Section 3.1 of the Agreement, Brindoval is required to rebrand its household cleaning product line from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH." Section 3.1(b) specifies that the word "BRINDOVAL" must appear in no less than seventy-five percent (75%) of the type size of the words "MERIDIAN FRESH" on all packaging, labeling, marketing materials, and digital displays. Brindoval must complete the rebranding within 120 days of the date of execution, establishing a compliance deadline of September 12, 2023.
Channel Restrictions. Use of the modified mark "BRINDOVAL MERIDIAN FRESH" is permitted only in the following channels:
(a) Brindoval-branded retail stores (i.e., physical store locations operated by Brindoval or its affiliates); and
(b) Brindoval's own e-commerce platform (currently www.crestviewhomegoods.com).
Use of the modified mark on third-party retail platforms — including, but not limited to, Amazon, Walmart.com, and Adriatic Corporation — or in wholesale distribution to third-party retailers is expressly prohibited.
Product-Category Restrictions. Use of the modified mark is limited to household cleaning products in International Class 3. Brindoval is prohibited from expanding the use of any mark incorporating the word "MERIDIAN" into personal care products, home fragrance products, or laundry detergent products.
Trade Dress. Brindoval is required to permanently discontinue use of the teal-and-white color scheme and the wave device previously associated with the MERIDIAN FRESH product line. Any replacement trade dress adopted by Brindoval must be submitted to MCB for review (not approval) at least thirty (30) days before commercial use. MCB may raise objections to the proposed replacement trade dress during the review period.
Quality Monitoring. Brindoval is required to provide MCB with representative product samples annually and to permit one (1) quality inspection per calendar year at Brindoval's facilities. The purpose of this provision is to ensure that the quality of products sold under the modified mark does not diminish the goodwill associated with the MERIDIAN mark generally.
Non-Challenge Covenant. Brindoval covenants not to challenge, directly or indirectly, the validity, enforceability, or scope of MCB's U.S. Registration Nos. 4,218,506, 5,034,771, and 5,589,320, including by way of petition for cancellation, inter partes review, or affirmative defense in any future proceeding.
Amendment to Brindoval's Application. Brindoval is required to amend its pending trademark application Serial No. 97/412,558 to reflect the modified mark "BRINDOVAL MERIDIAN FRESH" and to include a description of goods limited to "household cleaning preparations sold exclusively through Brindoval-branded retail and e-commerce channels." The amendment must be filed with the USPTO in a timely manner following execution of the Agreement.
Liquidated Damages. Section 9.2 of the Agreement provides that any breach by Brindoval of the channel restrictions or product-category restrictions shall subject Brindoval to liquidated damages in the amount of $500,000 per occurrence, in addition to MCB's actual damages. The parties agreed that the liquidated damages amount represents a reasonable pre-estimate of the harm that would result from such a breach and is not intended as a penalty.
Governing Law. The Agreement is governed by and construed in accordance with the laws of the State of New York, without giving effect to any choice-of-law or conflict-of-law provisions.
Term. The Agreement is perpetual in duration, remaining in effect unless terminated by the mutual written consent of both parties or by reason of a material breach that remains uncured following the notice and cure provisions set forth in the Agreement.
6. Financial Summary
6.1 Attorney Fees
The following table summarizes the attorney fees incurred in this matter by timekeeper:
All time entries were reviewed and approved by the Responsible Partner and Billing Partner in accordance with the Firm's standard billing procedures. The client was invoiced monthly, and all invoices have been paid in full as of the date of this memorandum.
6.2 Disbursements
The following table summarizes the disbursements and third-party costs incurred in this matter:
6.3 Total Matter Cost to MCB
The total cost of this matter to the client is summarized as follows:
Total attorney fees: $618,750.00
Total disbursements: $102,840.00
Grand total matter cost: $721,590.00
6.4 Net Financial Outcome
The net financial outcome of the matter for MCB is as follows:
Settlement payment received by MCB: $1,350,000.00
Less total matter cost: ($721,590.00)
Net recovery to MCB: $628,410.00
In addition to the direct financial recovery, MCB obtained substantial prospective brand-protection value through the coexistence restrictions embedded in the Agreement, including the mark-modification requirement, channel and product-category restrictions, liquidated damages provisions, and the non-challenge covenant. While the prospective brand-protection value of these restrictions was not separately quantified, MCB's management — including CEO Sandra Kwan and VP Brand Management Rachel Dominguez — deemed these provisions "strategically significant" to the long-term integrity and value of the MERIDIAN brand portfolio, particularly in the context of Waypoint Capital Partners' ownership and the brand's contribution to MCB's enterprise value. Thomas R. Hennessy expressed the client's satisfaction with the overall outcome in his communications with the engagement team.
7. Third Parties and Expert Consultants
The following third parties and expert consultants were involved in or relevant to this matter:
8. Key Documents in File
The following is a comprehensive index of the key documents contained in the matter file. All documents are maintained in both physical and electronic form in the Firm's document management system. Documents are listed in chronological order.
1. Engagement Letter — Calderwood & Harkness LLP / Meridian Consumer Brands LLC (September 26, 2022)
2. Cease-and-Desist Letter to Brindoval Home Goods Inc. (attn: Karen A. Whitfield, General Counsel) (September 26, 2022)
3. Internal Memorandum: Trademark Strength and Likelihood of Confusion Analysis (October 3, 2022) [Attorney Work Product — Privileged]
4. Expert Engagement Letter — Lakeshore Brand Consulting LLC (Dr. Elaine Furman, Ph.D.) (October 5, 2022)
5. Internal Memorandum: Litigation Strategy and Risk Assessment (October 7, 2022) [Attorney Work Product — Privileged]
6. Response Letter from Halverson McKay & Pruitt LLP on behalf of Brindoval (October 10, 2022)
7. Letter to Client (Thomas R. Hennessy) re Brindoval's Response and Recommended Next Steps (October 12, 2022)
8. Notice of Opposition, TTAB Opposition No. 91/278,415, against Application Serial No. 97/412,558 (October 14, 2022)
9. Complaint, Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., S.D.N.Y. Case No. 1:22-cv-09483 (November 7, 2022)
10. Memorandum of Law in Support of Motion for Preliminary Injunction (November 18, 2022)
11. Declaration of Rachel Dominguez in Support of Motion for Preliminary Injunction (November 18, 2022)
12. Declaration of Dr. Elaine Furman — Consumer Confusion Survey Report (November 18, 2022)
13. Proposed Order Granting Preliminary Injunction (November 18, 2022)
14. Letter to Client (Thomas R. Hennessy) re Preliminary Injunction Hearing Report (December 20, 2022)
15. Internal Memorandum: Analysis of Court's Preliminary Injunction Order (January 11, 2023) [Attorney Work Product — Privileged]
16. FRCP 26(a)(1) Initial Disclosures — Meridian Consumer Brands LLC (January 23, 2023)
17. First Set of Interrogatories to Defendant (Nos. 1–25) (January 30, 2023)
18. First Set of Requests for Production to Defendant (Nos. 1–30) (January 30, 2023)
19. Internal Memorandum: Mediation Preparation and Settlement Valuation (February 10, 2023) [Attorney Work Product — Privileged]
20. Confidential Mediation Statement (February 13, 2023) [Mediation Privilege]
21. Letter to Client (Thomas R. Hennessy) re Mediation Outcome and Next Steps (February 16, 2023)
22. Internal Memorandum: Proposed Coexistence Agreement Terms (February 28, 2023) [Attorney Work Product — Privileged]
23. Trademark Coexistence Agreement — First Draft (March 6, 2023)
24. Redline Comparison / Negotiation Issues List (March 20, 2023) [Attorney Work Product — Privileged]
25. Negotiation Issues Tracker Spreadsheet (March 6 – April 28, 2023) [Attorney Work Product — Privileged]
26. Letter to Opposing Counsel (Gregory T. Halverson) re Markup Response (April 3, 2023)
27. Internal Memorandum: Final Open Issues and Recommended Positions (April 18, 2023) [Attorney Work Product — Privileged]
28. Letter to Client (Thomas R. Hennessy) re Final Terms and Recommendation (May 8, 2023)
29. Trademark Coexistence Agreement — Execution Version (May 15, 2023)
30. Escrow Agreement — MCB / Brindoval / Dralvecen National Bank (May 15, 2023)
31. Joint Stipulation of Dismissal with Prejudice, S.D.N.Y. Case No. 1:22-cv-09483 (May 22, 2023)
32. Proposed Order of Dismissal with Prejudice (May 22, 2023)
33. Withdrawal of Notice of Opposition with Consent — TTAB Opposition No. 91/278,415 (May 22, 2023)
34. Order of Dismissal with Prejudice (Hon. Patricia M. Albright) (May 30, 2023)
35. Escrow Release Instruction Letter to Dralvecen National Bank (May 30, 2023)
36. Letter to Client (Thomas R. Hennessy): Matter Closing Summary and Ongoing Obligations (May 30, 2023)
37. Final Invoice and Fee Summary (May 30, 2023)
38. Client File Closing Memorandum (this document) (May 30, 2023) [Attorney Work Product — Privileged]
9. Continuing Obligations and Post-Closing Action Items
Although this matter is now closed, the Trademark Coexistence Agreement imposes certain continuing obligations on both parties. The following post-closing action items and monitoring responsibilities have been communicated to the client in C&H's closing letter dated May 30, 2023. These items are documented here for the Firm's records and to facilitate any future engagement by the client for monitoring or enforcement purposes.
9.1 Brindoval Rebranding Deadline. Pursuant to Section 3.1 of the Coexistence Agreement, Brindoval must complete the rebranding of its household cleaning product line from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" — with the word "BRINDOVAL" appearing in no less than 75% of the type size of "MERIDIAN FRESH" — by September 12, 2023 (120 days from the May 15, 2023 execution date). MCB should actively monitor Brindoval's compliance with this deadline, including through in-store observation, review of Brindoval's e-commerce platform, and direct inquiry to Brindoval's counsel if necessary. Non-compliance with the rebranding deadline would constitute a material breach of the Agreement.
9.2 Annual Quality Monitoring. Under the quality monitoring provisions of the Agreement, Brindoval is required to provide MCB with representative product samples annually and to permit one (1) quality inspection per calendar year at Brindoval's facilities. MCB's brand management team, under the direction of Rachel Dominguez, VP, Brand Management, should establish an internal calendar and process for requesting and reviewing annual product samples and scheduling the annual inspection.
9.3 Trade-Dress Review. Brindoval is required to submit any replacement trade dress to MCB for review at least thirty (30) days before commercial use. MCB should be prepared to promptly review any such submission and raise any objections within the review period. While the Agreement provides a review right rather than an approval right, timely objection is important to preserve MCB's ability to enforce the trade dress provisions if necessary.
9.4 Channel and Category Compliance Monitoring. MCB should implement and maintain ongoing market surveillance to ensure that Brindoval does not use the "BRINDOVAL MERIDIAN FRESH" mark, or any mark incorporating the word "MERIDIAN," on third-party retail platforms (e.g., Amazon, Walmart.com, Adriatic Corporation), in wholesale distribution channels, or in product categories outside household cleaning products in International Class 3 — specifically, personal care products, home fragrance products, and laundry detergent products. Any breach of the channel or product-category restrictions triggers liquidated damages of $500,000 per occurrence, in addition to MCB's actual damages, under Section 9.2 of the Agreement.
9.5 Application Amendment. MCB should confirm that Brindoval files the required amendment to its pending trademark application Serial No. 97/412,558 with the USPTO, reflecting the modified mark "BRINDOVAL MERIDIAN FRESH" and the limited description of goods. MCB may monitor the status of the application through the USPTO's Trademark Status and Document Retrieval ("TSDR") system and should follow up with Brindoval's counsel if the amendment is not filed in a timely manner.
9.6 Recommendation to Client. C&H's closing letter to Thomas R. Hennessy dated May 30, 2023 recommends that MCB implement internal brand-monitoring procedures — including the use of automated trademark watch services and periodic marketplace sweeps — to detect any violations of the Coexistence Agreement or any new third-party uses of "MERIDIAN" or confusingly similar marks in the household cleaning product category. The Firm further recommends that MCB consider engaging IP counsel for periodic review of Brindoval's compliance with the Agreement and for ongoing trademark portfolio maintenance.
10. Document Retention Instructions
All documents generated or collected in connection with Matter No. 1011-00003, in both physical and electronic form, shall be retained in accordance with Calderwood & Harkness LLP's standard document retention policy for closed intellectual property litigation matters. The following specific retention instructions apply:
Minimum Retention Period. All documents shall be retained for a minimum period of ten (10) years from the date of matter closing, i.e., through at least May 30, 2033. This minimum retention period is consistent with the Firm's standard retention policy and New York's statute of limitations for contract enforcement actions.
Extended Retention Recommendation. Given the perpetual term of the Trademark Coexistence Agreement and the potential for future enforcement actions under the Agreement — including claims for liquidated damages, injunctive relief, or contempt of the Court's retained jurisdiction — extended retention of all matter documents beyond the minimum ten-year period is recommended. The Firm's Records Management department should flag this matter for extended retention and should not destroy or purge any documents without the prior authorization of the Responsible Partner or his designee.
Privileged and Work Product Materials. All internal memoranda, attorney work product, attorney-client privileged communications, and mediation-related materials shall be flagged and labeled as "ATTORNEY-CLIENT PRIVILEGED" and/or "ATTORNEY WORK PRODUCT" as applicable. These materials shall be stored separately within the Firm's secure document management system and shall be subject to heightened access controls consistent with the Firm's privilege-protection protocols. Mediation-related materials — including the Confidential Mediation Statement and any notes from the mediation session — shall additionally be flagged as subject to mediation privilege.
Client Authorization. Client authorization for the return or destruction of original documents shall be obtained at a future date in accordance with the Firm's standard file-closing policy. Until such authorization is received, all original documents shall be maintained by the Firm. The Firm's Records Management department should initiate the document-return/destruction inquiry with the client at the appropriate time following the expiration of the minimum retention period or earlier upon client request.
11. Conflict-Check Update
The Firm's conflict-check database (Greaves Services Inc.) shall be updated to reflect the following information in connection with the closing of this matter:
Matter Number: 1011-00003
Matter Status: Closed / Completed
Date Closed: May 30, 2023
Client: Meridian Consumer Brands LLC (Delaware LLC; EIN 83-4027165)
Adverse Party: Brindoval Home Goods Inc. (Minnesota corporation; EIN 41-2091487)
Related Parties to be Entered/Updated:
• Waypoint Capital Partners LLC (MCB majority equity holder / sponsor; Delaware LLC; 590 Madison Avenue, 22nd Floor, New York, NY 10022; Managing Partner: James Alderton)
• Douglas P. Lindstrom (CEO, Brindoval Home Goods Inc.)
• Karen A. Whitfield (General Counsel, Brindoval Home Goods Inc.)
• Nathan Cho (Vice President, Brindoval Home Goods Inc.)
• Gregory T. Halverson / Halverson McKay & Pruitt LLP (adverse counsel)