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PRIVILEGED AND CONFIDENTIAL ATTORNEY WORK PRODUCT / ATTORNEY-CLIENT COMMUNICATION

CALDERWOOD & HARKNESS LLP 1251 Avenue of the Americas, 40th Floor New York, NY 10020

MEMORANDUM

TO: Alan Ngo, Responsible Partner, intellectual Property

FROM: Christy Bauer, Lead Associate, intellectual Property

DATE: February 28, 2023

RE: Proposed Coexistence Agreement Terms — Analysis and Recommendations

MATTER: Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., C&H Matter No. 1011-00003 (Billing Code 11470-001); S.D.N.Y. Case No. 1:22-cv-09483 (Hon. Patricia M. Albright); TTAB Opposition No. 91/278,415

I. Executive Summary

The purpose of this memorandum is to analyze each substantive term from the framework term sheet reached at the February 15, 2023 court-ordered mediation before retired Judge Harold K. Novotny of Novotny ADR Services LLC, and to recommend specific drafting approaches and negotiation positions for the definitive Trademark Coexistence Agreement between Meridian Consumer Brands LLC ("MCB") and Brindoval Home Goods Inc. ("Brindoval").

As you are aware, the mediation yielded a framework term sheet that the parties initialed on February 15, 2023. The parties agreed to continue negotiating a comprehensive coexistence agreement to resolve both the pending federal court action (S.D.N.Y. Case No. 1:22-cv-09483) and the TTAB opposition proceeding (Opposition No. 91/278,415). Per your February 16, 2023 letter to Thomas R. Hennessy, MCB's General Counsel, the framework contemplates five principal components:

(1) a one-time settlement payment in the range of $1.2 million to $1.5 million;

(2) mark modification to include the "BRINDOVAL" prefix;

(3) channel and product-category restrictions;

(4) trade-dress changes formalizing and making permanent the relief obtained in the January 9, 2023 preliminary injunction order; and

(5) a non-challenge covenant.

This memorandum addresses each of these terms in detail. In addition, the memorandum analyzes several additional provisions necessary for a comprehensive agreement that were not expressly enumerated in the framework term sheet but that are standard components of trademark coexistence agreements and essential to the enforceability and completeness of the definitive agreement. These additional provisions include quality monitoring, liquidated damages, term and termination, governing law and dispute resolution, escrow mechanics for the settlement payment, amendment of Brindoval's pending trademark application, and mutual release and dismissal provisions.

Recommendation: We recommend targeting a settlement payment of $1,350,000, coupled with robust use restrictions and enforcement mechanisms as detailed in Parts III and IV below. We further recommend preparing an initial draft of the Trademark Coexistence Agreement for circulation to Halverson McKay & Pruitt LLP ("HMP"), Brindoval's counsel, no later than the week of March 6, 2023. This timeline will allow the parties to negotiate open issues and target execution by mid-May 2023, consistent with the general expectations communicated during the mediation.

II. Background

A. MCB's Trademark Portfolio

MCB holds the following federal trademark registrations relevant to this matter:

All three registrations are active and in good standing. Maintenance filings under Sections 8 and 15 of the Lanham Act have been timely made for U.S. Reg. No. 4,218,506, which now enjoys incontestable status. U.S. Reg. Nos. 5,034,771 and 5,589,320 have not yet reached the five-year threshold for Section 15 declarations, but both remain valid and enforceable.

MCB's MERIDIAN cleaning product line generated approximately $94.5 million in revenue in fiscal year 2022, representing approximately 24.4% of MCB's total revenue of $387 million. The MERIDIAN cleaning line is MCB's flagship brand and its single largest revenue source. Cumulative advertising expenditures on the MERIDIAN cleaning line from 2011 through 2022 total approximately $47.2 million, reflecting an average annual spend of approximately $3.93 million over the twelve-year period. These figures, drawn from MCB's internal financial data produced in initial disclosures, are relevant to the damages analysis discussed in Part III.A below and to the reasonableness of the proposed liquidated-damages provision discussed in Part III.I below.

MCB is a Delaware limited liability company headquartered at 450 Park Avenue South, 14th Floor, New York, New York 10016. MCB is majority-owned by Waypoint Capital Partners LLC, a private equity firm that acquired MCB in 2019 for approximately $625 million. The Waypoint acquisition is relevant to the extent that MCB's brand-protection strategy is closely monitored by its PE sponsor, and favorable resolution of this matter is a priority for MCB's management and board.

B. Brindoval's Infringing Activities

Brindoval Home Goods Inc. is a Minnesota corporation headquartered at 7200 France Avenue South, Suite 300, Edina, Minnesota 55435. Brindoval is a large, publicly traded home-goods retailer with fiscal year 2022 revenue of approximately $2.1 billion. Brindoval operates 148 retail stores across 12 Midwestern and Mountain West states (Minnesota, Wisconsin, Iowa, Illinois, Michigan, Indiana, North Dakota, South Dakota, Nebraska, Montana, Wyoming, and Colorado) and a nationwide e-commerce platform accessible at www.crestviewhomegoods.com.

In July 2022, Brindoval launched a private-label cleaning product line under the mark "MERIDIAN FRESH" in International Class 3. The MERIDIAN FRESH line includes four product SKUs: an all-purpose cleaning spray, a glass cleaner, disinfecting wipes, and dish soap. The products were initially offered across all 148 Brindoval retail stores and on the Brindoval e-commerce platform.

Prior to launch, Brindoval filed a trademark application with the United States Patent and Trademark Office on May 12, 2022, under Serial No. 97/412,558, seeking registration of MERIDIAN FRESH in International Class 3. The application was published for opposition on September 6, 2022.

The MERIDIAN FRESH products were packaged in a teal-and-white color scheme with a stylized wave device that is confusingly similar to MCB's registered wave-device logo (U.S. Reg. No. 5,589,320). The combined effect of the nearly identical word mark and the confusingly similar trade dress created a significant likelihood of consumer confusion, as confirmed by Dr. Elaine Furman's consumer confusion survey discussed below.

Brindoval's MERIDIAN FRESH line generated gross revenue of approximately $6.8 million from its July 2022 launch through November 2022 — a five-month period. Annualized, this figure projects to approximately $16.32 million. These revenue figures, provided in Brindoval's initial disclosures, are relevant both to MCB's potential disgorgement claim and to the overall damages analysis underlying the settlement payment negotiation.

C. Current Procedural Posture

The procedural history of this matter may be summarized as follows:

Cease-and-Desist Phase. MCB sent a cease-and-desist letter to Brindoval on September 26, 2022, identifying MCB's trademark registrations, detailing the confusing similarity between MERIDIAN FRESH and MCB's MERIDIAN and MERIDIAN CLEAN marks, and demanding that Brindoval immediately cease all use of the MERIDIAN FRESH mark and withdraw its pending trademark application. On October 10, 2022, Gregory T. Halverson of Halverson McKay & Pruitt LLP, responding on behalf of Brindoval, denied infringement, asserted that the marks were sufficiently distinct, and declined to cease use.

TTAB Opposition. On October 14, 2022, MCB filed a Notice of Opposition at the Trademark Trial and Appeal Board (Opposition No. 91/278,415), opposing registration of Brindoval's MERIDIAN FRESH mark on the grounds of likelihood of confusion with MCB's prior registrations.

Federal Court Action. On November 7, 2022, MCB filed its Complaint in the United States District Court for the Southern District of New York (Case No. 1:22-cv-09483, assigned to the Honorable Patricia M. Albright), asserting claims for federal trademark infringement under 15 U.S.C. § 1114(1), false designation of origin under 15 U.S.C. § 1125(a), and injury to business reputation and dilution under New York General Business Law § 360-l. MCB simultaneously moved for a preliminary injunction and temporary restraining order. Brindoval answered and filed a counterclaim for declaratory judgment of non-infringement.

Preliminary Injunction Ruling. On January 9, 2023, Judge Albright issued a Memorandum and Order granting MCB's motion for a preliminary injunction in part and denying it in part. Specifically, the Court ordered Brindoval to modify its packaging trade dress within 45 days by (i) removing the wave device and (ii) changing the teal-and-white color scheme. However, the Court declined to enjoin Brindoval's use of the word mark "MERIDIAN FRESH" pending trial, finding that MCB had not demonstrated a sufficiently clear likelihood of success on the merits with respect to the word mark alone, divorced from the trade dress. The Court noted the "close question" posed by the word mark and reserved judgment for trial on the full merits.

Consumer Confusion Survey. Dr. Elaine Furman of Lakeshore Brand Consulting LLC conducted a consumer confusion survey in October 2022 using a Squirt/modified Eveready protocol. The survey involved 612 respondents drawn from MCB's target demographic. The survey yielded a raw confusion rate of 38.6%, reduced to a net confusion rate of 31.4% after subtracting the 7.2% control-group noise. A net confusion rate exceeding 15%–20% is generally considered strong evidence of likelihood of confusion in the Second Circuit. Dr. Furman's survey report and supporting data were disclosed to Brindoval in MCB's initial disclosures on January 23, 2023. MCB incurred $87,500 in fees to Lakeshore Brand Consulting for the survey.

Initial Disclosures and discovery. The parties exchanged initial disclosures on January 23, 2023. Fact discovery is ongoing, though no depositions have yet been taken.

Mediation. On February 15, 2023, the parties participated in a court-ordered mediation before retired Judge Harold K. Novotny of Novotny ADR Services LLC. The mediation resulted in a framework term sheet initialed by both parties, which serves as the basis for the analysis in this memorandum.

III. Analysis of Proposed Terms

A. Settlement Payment

Framework Term: One-time lump-sum payment in the range of $1.2 million to $1.5 million from Brindoval to MCB.

Analysis:

The framework term sheet establishes a negotiating range for the monetary component of the settlement. To evaluate the reasonableness of this range and identify our recommended target within it, it is necessary to consider MCB's damages exposure if the case were litigated to trial, the costs of continued litigation, and the overall settlement dynamics.

MCB's damages theories, if the case proceeded to trial, would include the following:

(a) Lost Profits Attributable to Diverted Sales. MCB would argue that a portion of Brindoval's MERIDIAN FRESH sales were diverted from MCB's MERIDIAN cleaning line. Given the 31.4% net confusion rate and the overlapping product categories, MCB could plausibly claim that a meaningful percentage of Brindoval's $16.32 million in annualized revenue represents sales that would otherwise have gone to MCB's MERIDIAN products. Even applying conservative attribution assumptions, the lost-profits figure could be significant.

(b) Reasonable Royalty Theory. As an alternative measure, MCB could seek a reasonable royalty — i.e., the amount Brindoval would have paid for a license to use the MERIDIAN mark. Given the strength of MCB's marks and the premium associated with the MERIDIAN brand, a reasonable royalty rate in the range of 5%–8% of Brindoval's MERIDIAN FRESH revenue would be defensible, yielding royalty damages in the range of $816,000–$1,305,600 on annualized revenue of $16.32 million, and growing with each additional year of use prior to trial.

(c) Disgorgement of Brindoval's Profits. Under 15 U.S.C. § 1117(a), MCB could seek disgorgement of Brindoval's profits attributable to the infringement. Brindoval's $6.8 million in gross revenue over five months provides a baseline, though MCB would need to prove that the profits were attributable to Brindoval's use of the infringing mark rather than other factors. Even after deducting Brindoval's costs and allowing for apportionment, the potential disgorgement figure could be substantial.

Against these potential recoveries, several factors counsel in favor of settlement. MCB's total matter costs to date are significant, encompassing attorney fees incurred by this firm, the $87,500 paid to Lakeshore Brand Consulting for Dr. Furman's survey, and mediation costs. Continued litigation through trial — including depositions, expert discovery, pre-trial motions, and trial itself — would substantially increase these costs. Moreover, while MCB's claims are strong, the Court's refusal to enjoin the word mark on the preliminary injunction motion introduces an element of uncertainty regarding the outcome at trial. The Court characterized the word-mark question as a "close" one, which means that trial on the merits is not a foregone conclusion in MCB's favor with respect to the MERIDIAN FRESH word mark standing alone.

Balancing the strength of MCB's claims (31.4% net confusion, favorable PI ruling on trade dress, incontestable status of U.S. Reg. No. 4,218,506) against the costs and uncertainties of continued litigation, and considering the substantial prospective brand-protection value of the coexistence restrictions that will accompany the monetary payment, the proposed range of $1.2 million to $1.5 million is reasonable.

Recommendation: We recommend targeting $1,350,000 as the final agreed settlement amount. This figure falls at the midpoint of the mediated range and represents a reasonable recovery when combined with the prospective brand-protection value of the use restrictions, channel limitations, product-category restrictions, and trade-dress requirements that will be embedded in the Coexistence Agreement. The payment should be structured as a single lump sum — not as royalties, installments, or ongoing payments — to achieve a clean, final resolution of the monetary component. A lump-sum structure avoids the administrative burden of ongoing royalty calculations and eliminates the risk of payment disputes or defaults over time.

Drafting Notes:

• Include clear payment timing: Brindoval shall deposit the settlement amount into escrow within ten (10) business days of execution of the Coexistence Agreement.

• Structure the escrow mechanics through a neutral escrow agent. We recommend designating Dralvecen National Bank as the escrow agent, given MCB's existing banking relationship with that institution. The escrow mechanics are discussed in greater detail in Part III.L below.

• The release of escrowed funds to MCB should be contingent on entry of the Order of Dismissal with Prejudice in S.D.N.Y. Case No. 1:22-cv-09483.

• Include a provision specifying that the settlement payment constitutes consideration for the mutual releases and the Coexistence Agreement as a whole, and is not an admission of liability by Brindoval.

B. Mark Modification

Framework Term: Brindoval must rebrand from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH," with the word "BRINDOVAL" appearing in no less than 75% of the type size of "MERIDIAN FRESH."

Analysis:

The addition of the "BRINDOVAL" prefix to the MERIDIAN FRESH mark is a core element of the coexistence framework and a standard mechanism in trademark coexistence agreements. The prefix "BRINDOVAL" — which is Brindoval's own house mark and the name under which it has built substantial consumer recognition over many years — serves as a source-identifier that distinguishes Brindoval's products from MCB's MERIDIAN and MERIDIAN CLEAN marks. When consumers encounter "BRINDOVAL MERIDIAN FRESH," the prominent inclusion of the Brindoval house mark should substantially reduce the likelihood of confusion by directing consumer attention to the Brindoval source and away from any association with MCB.

The 75% minimum type-size requirement is a critical safeguard. Without a robust type-size requirement, Brindoval could technically comply with the prefix requirement while rendering "BRINDOVAL" in small, easily overlooked text, thereby undermining the purpose of the mark modification. The 75% minimum ensures that "BRINDOVAL" is visually prominent on all packaging, advertising, and digital displays, and is not buried in fine print or subordinated to "MERIDIAN FRESH" in a way that recreates the original confusion.

However, several implementation issues require attention in the drafting:

Type-Size Measurement. The framework term sheet refers to "type size" without specifying whether the 75% requirement applies to the height of the typeface, the overall area of the lettering, or both. These are distinct measurements, and ambiguity could lead to disputes. For example, Brindoval could use a condensed font for "BRINDOVAL" that meets a height requirement but appears significantly smaller in overall visual impact due to narrow character width. We recommend specifying that the 75% requirement applies to the height of the typeface at minimum, measured from baseline to cap height, and that the "BRINDOVAL" text must be rendered in a font weight and width that is at least comparable to that of "MERIDIAN FRESH" such that it is equally legible and visually prominent.

Unitary Mark Requirement. The modified mark "BRINDOVAL MERIDIAN FRESH" must be used as a single, unitary mark. This means that "BRINDOVAL" and "MERIDIAN FRESH" must appear together in a single location on the packaging, advertising, or display — not separated from one another (e.g., "BRINDOVAL" on the top of the package and "MERIDIAN FRESH" on the bottom, or "BRINDOVAL" in a different color or font style that visually separates it from "MERIDIAN FRESH"). The purpose of the prefix is defeated if consumers encounter "MERIDIAN FRESH" in isolation, with the "BRINDOVAL" identifier relegated to a distant portion of the packaging.

Rebranding Deadline. The framework term sheet does not specify a deadline for completing the rebranding across all products and channels. Given the complexity of packaging redesign, production runs, distribution logistics, and the need to deplete or destroy existing inventory bearing the unmodified "MERIDIAN FRESH" mark, a reasonable period must be established. We recommend 120 days from execution of the Coexistence Agreement, which provides ample time for Brindoval to complete the rebranding while ensuring that MCB's interests are not prejudiced by an excessively long transition period.

Existing Inventory. All existing inventory bearing the unmodified "MERIDIAN FRESH" mark — i.e., products that do not include the "BRINDOVAL" prefix — must be sold through or destroyed within the same 120-day rebranding period. Brindoval should not be permitted to continue selling unmodified inventory indefinitely under the guise of a sell-through period. The 120-day period is sufficient for Brindoval to deplete existing stock given the relatively modest sales volume of the MERIDIAN FRESH line (approximately $1.36 million per month).

Recommendation:

• Insist on the 75% minimum type-size requirement as a non-negotiable term. Specify that the requirement applies to the height of the typeface at minimum, and that the "BRINDOVAL" text must be rendered in a font weight and width at least comparable to that of "MERIDIAN FRESH."

• Set a rebranding deadline of 120 days from execution of the Coexistence Agreement.

• Require that the modified mark "BRINDOVAL MERIDIAN FRESH" be used as a single unitary mark — no separation of "BRINDOVAL" from "MERIDIAN FRESH" on packaging, advertising, or in any other context.

• Require that all existing inventory bearing the unmodified "MERIDIAN FRESH" mark be sold through or destroyed within the same 120-day period. Brindoval must certify in writing to MCB upon expiration of the 120-day period that no unmodified inventory remains in any distribution channel.

Drafting Notes: Include a specimen-approval provision requiring Brindoval to submit initial specimens of the rebranded packaging (for each SKU) to MCB for confirmation of compliance with the type-size, font-weight, and unitary-mark requirements before commercial launch of the rebranded products. We propose placing the type-size specification in §3.1(b) of the agreement and the rebranding timeline and inventory provisions in §3.2.

C. Channel Restrictions

Framework Term: Brindoval may use the modified mark "BRINDOVAL MERIDIAN FRESH" only (a) in Brindoval-branded retail stores and (b) on Brindoval's own e-commerce platform (www.crestviewhomegoods.com). Use on third-party retail platforms (e.g., Amazon, Walmart.com) or in wholesale distribution is prohibited.

Analysis:

Channel restrictions are essential to limiting the zones of contact between Brindoval's modified mark and MCB's MERIDIAN marks. MCB distributes its MERIDIAN cleaning products through a broad range of channels, including major grocery chains, club warehouses, mass-market retailers, drug stores, and leading e-commerce platforms (including Amazon, Walmart.com, and Adriatic Corporation) in all 50 states and the District of Columbia. The breadth of MCB's distribution means that virtually any expansion of Brindoval's MERIDIAN FRESH products beyond Brindoval's own retail channels would create points of contact — and therefore potential confusion — between the two brands.

By confining Brindoval's use of the BRINDOVAL MERIDIAN FRESH mark to its own retail stores and its own e-commerce platform, the channel restriction substantially reduces the likelihood of consumer confusion in the marketplace. Consumers shopping in Brindoval-branded stores or on the Brindoval website are already in a context that identifies Brindoval as the source, which reinforces the source-distinguishing function of the "BRINDOVAL" prefix. In contrast, if Brindoval's products were sold on Amazon or in grocery stores alongside MCB's MERIDIAN products, the modified mark might be less effective at preventing confusion, particularly if consumers encounter the products side by side on a shelf or in search results.

Brindoval currently operates 148 stores across 12 Midwestern and Mountain West states. Its geographic footprint is distinctly regional, whereas MCB's distribution is national. The channel restrictions reinforce this natural geographic separation by preventing Brindoval from expanding the distribution of BRINDOVAL MERIDIAN FRESH products into channels where MCB's MERIDIAN products are already present.

Several definitional and scope issues require attention:

Definition of "Brindoval-Branded Retail Stores." The channel restriction must define this term with precision. "Brindoval-branded retail stores" should include only brick-and-mortar stores that are owned and operated directly by Brindoval Home Goods Inc. or its wholly-owned subsidiaries. The definition should exclude (i) stores operated by franchisees or licensees (to the extent Brindoval expands into franchising in the future), (ii) third-party retailers that may carry Brindoval-branded products on their shelves, (iii) pop-up stores or temporary retail locations not operated by Brindoval, and (iv) store-within-a-store concepts where Brindoval might operate a branded section within a third-party retailer's store. The definition should, however, include future Brindoval-owned retail locations (i.e., new stores opened by Brindoval after the date of the agreement), as well as outlet locations directly operated by Brindoval.

E-Commerce Restriction. The restriction on e-commerce sales should encompass not only third-party marketplace platforms such as Amazon, Walmart.com, Adriatic Corporation, and Cascade Holdings, but also third-party fulfillment or drop-ship arrangements where Brindoval products would appear on or be sold through non-Brindoval websites, even if Brindoval itself fulfills the order. The relevant concern is the consumer-facing channel — if a consumer encounters a BRINDOVAL MERIDIAN FRESH product on a third-party website, the channel restriction is violated regardless of the fulfillment logistics.

Digital Advertising. Channel restrictions in the physical and e-commerce retail context do not, by themselves, address digital advertising and social media marketing. Brindoval's digital advertisements — including paid search ads, social media posts, display advertisements, and influencer marketing — could appear to consumers nationwide, regardless of where those consumers ultimately purchase the product. This could blur the channel distinction and create consumer confusion in contexts where the "BRINDOVAL" prefix may not be as prominent (e.g., small-format mobile ads). The agreement should address digital advertising by permitting Brindoval to advertise the BRINDOVAL MERIDIAN FRESH line online, provided that (a) all digital advertisements clearly identify Brindoval Home Goods Inc. as the source, (b) digital advertisements direct consumers only to Brindoval's own channels (i.e., Brindoval retail stores and www.crestviewhomegoods.com), and (c) Brindoval does not bid on or purchase MCB's "MERIDIAN" or "MERIDIAN CLEAN" marks as search-engine keywords.

Licensing Prohibition. The channel restriction should be reinforced by an express prohibition on licensing the modified mark to any third party. If Brindoval were to license "BRINDOVAL MERIDIAN FRESH" to a third-party manufacturer, retailer, or distributor, that third party's use of the mark could extend beyond the authorized channels and product categories, defeating the purpose of the coexistence restrictions.

Recommendation:

• Define "Brindoval-Branded Retail Channels" narrowly: brick-and-mortar retail stores owned and operated by Brindoval Home Goods Inc. or its wholly-owned subsidiaries, and the Brindoval e-commerce domain (www.crestviewhomegoods.com), including any successor domain directly operated by Brindoval.

• Expressly prohibit sales through third-party e-commerce marketplaces, wholesale distributors, grocery or club channels, drug stores, mass-market retailers, and any retail channel where MCB's MERIDIAN products are also sold.

• Address digital advertising by permitting Brindoval to advertise the BRINDOVAL MERIDIAN FRESH line online, provided that all advertisements clearly identify Brindoval as the source, direct consumers exclusively to Brindoval's own authorized channels, and do not bid on MCB's MERIDIAN or MERIDIAN CLEAN trademarks as search-engine keywords.

• Include an express prohibition on licensing the modified mark to any third party for any purpose.

Drafting Notes: Define the terms "Authorized Channels" and "Prohibited Channels" in the definitions section of the agreement. Tie breach of channel restrictions to the liquidated-damages provision (§9.2), such that any sale or distribution through a Prohibited Channel constitutes a breach triggering the liquidated-damages remedy.

D. Product-Category Restrictions

Framework Term: Brindoval may use the modified mark only for household cleaning products in International Class 3. Expansion into personal care, home fragrance, or laundry detergent products under any mark incorporating "MERIDIAN" is prohibited.

Analysis:

MCB operates across multiple product lines within and adjacent to International Class 3, including household cleaning products (the MERIDIAN line), personal care products, and home fragrance products. The product-category restriction is designed to protect MCB's existing and adjacent product categories from encroachment by Brindoval and to preserve MCB's ability to expand the MERIDIAN brand into new categories — including laundry detergent, which MCB has identified as a potential future category — without encountering Brindoval's mark.

However, International Class 3 is extremely broad. It encompasses cleaning preparations, polishing preparations, abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, and dentifrices, among other goods. A restriction that merely limits Brindoval to "IC 3" would not adequately protect MCB's interests, because Brindoval could expand into personal care products (which also fall within IC 3), home fragrance products (which may fall within IC 3 or IC 4 depending on the specific product), or other sub-categories that are adjacent to MCB's existing product lines.

The restriction should therefore be more specific than "IC 3." It should enumerate the specific products that Brindoval is permitted to sell under the BRINDOVAL MERIDIAN FRESH mark — i.e., the current MERIDIAN FRESH product assortment — and prohibit all other uses of any mark containing "MERIDIAN" on any product, regardless of International Class.

It is also important to address Brindoval's potential use of the word "MERIDIAN" without the "FRESH" suffix. The coexistence agreement should clearly prohibit Brindoval from using "MERIDIAN" alone or in any combination other than "BRINDOVAL MERIDIAN FRESH" on any products. This prevents Brindoval from launching a separate "MERIDIAN" branded line or from dropping the "FRESH" suffix to bring its mark closer to MCB's marks.

Recommendation:

• Define "Permitted Products" as a closed, enumerated list: all-purpose cleaning sprays, glass cleaners, disinfecting wipes, disinfecting sprays, and dish soap — i.e., the five product types currently comprising the MERIDIAN FRESH product assortment.

• Expressly prohibit expansion to any other product category under any mark containing "MERIDIAN" (whether "BRINDOVAL MERIDIAN FRESH" or any other formulation), including but not limited to: personal care products, home fragrance products, laundry detergent, air fresheners, candles, bath products, cosmetics, dentifrices, polishing preparations, and any product not included in the "Permitted Products" definition.

• Expressly prohibit Brindoval from using "MERIDIAN" alone or in any mark formulation other than "BRINDOVAL MERIDIAN FRESH" (e.g., "BRINDOVAL MERIDIAN," "MERIDIAN HOME," "MERIDIAN PURE," etc.).

• Include a "new product" provision: if Brindoval wishes to introduce additional household cleaning products (beyond the initial enumerated Permitted Products) under the BRINDOVAL MERIDIAN FRESH mark, Brindoval must provide MCB with sixty (60) days' advance written notice describing the proposed new product. MCB will have the right to object in writing within thirty (30) days of receiving such notice. If MCB objects, the parties shall meet and confer in good faith to attempt to resolve the dispute. If the parties are unable to resolve the dispute within an additional thirty (30) days, either party may submit the matter to binding arbitration or mediation as provided in the dispute-resolution clause.

Drafting Notes: Align the product-category restriction with the description-of-goods limitation that Brindoval must include in its amended trademark application (Serial No. 97/412,558), as discussed in Part III.H below. Consistency between the coexistence agreement and the amended application description is essential to avoid conflicts or gaps.

E. Trade-Dress Requirements

Framework Term: Brindoval must permanently discontinue the teal-and-white color scheme and the wave device. Replacement trade dress must be submitted to MCB for review (not approval) at least 30 days before commercial use.

Analysis:

The trade-dress provisions of the Coexistence Agreement serve to formalize and make permanent what the Court has already ordered on a preliminary basis. Judge Albright's January 9, 2023 preliminary injunction order required Brindoval to remove the wave device and change the teal-and-white color scheme within 45 days, but that order is interlocutory in nature and would be superseded by a final disposition of the case. The Coexistence Agreement should memorialize the trade-dress restrictions as permanent, contractual obligations that survive the dismissal of the federal court action.

The distinction between "review" and "approval" is important from both a practical and legal standpoint. If MCB were granted an "approval" right — i.e., a veto over Brindoval's replacement trade dress — this could be characterized as a form of quality control that implies a licensor-licensee relationship. Such a characterization would be inconsistent with the coexistence framework, which is predicated on the parties' independent ownership and use of their respective marks. An implied license relationship could create complications under trademark law, including potential arguments that MCB has engaged in naked licensing or that the coexistence arrangement is in substance a trademark license subject to different legal standards. The "review" right avoids these complications while still providing MCB with a meaningful opportunity to object if the replacement trade dress creates new confusion.

That said, the "review" right must be accompanied by a mechanism for resolving objections. If MCB reviews Brindoval's proposed replacement trade dress and identifies confusingly similar elements, the parties need a process for resolving the dispute — otherwise the review right is toothless. We recommend a tiered approach: if MCB objects in writing within the 30-day notice period, the parties will meet and confer in good faith; if the objection is not resolved, the dispute may be submitted to expedited mediation or arbitration, or referred to the Court retaining jurisdiction over the settlement.

The agreement should define the prohibited trade-dress elements with specificity to avoid ambiguity:

(i) Teal Color. The prohibition should reference a specific Pantone color or range. Brindoval's current teal is approximately Pantone 3282 C. The prohibition should cover teal as a primary or dominant packaging color, not merely the exact Pantone shade. Brindoval could otherwise make a minor adjustment to the shade of teal and argue technical compliance. We recommend defining the prohibition as covering any shade of teal, aqua, or turquoise as a primary or dominant packaging color — i.e., any color in the Pantone range of approximately 3245 C through 3295 C and functional equivalents.

(ii) White Background. The prohibition on the "teal-and-white color scheme" should clarify that the concern is the combination of teal as a primary color against a predominantly white background. White alone is not protectable, but the combination of teal and white is the specific trade-dress element at issue.

(iii) Wave Device. The prohibition should cover the specific wave device used by Brindoval, as well as any curvilinear design element that imitates or is confusingly similar to MCB's registered wave-device logo (U.S. Reg. No. 5,589,320). This prevents Brindoval from making minor modifications to the wave device and claiming it is a new, non-infringing design.

Recommendation:

• Require permanent discontinuation of: (i) teal (any shade of teal, aqua, or turquoise in the approximate Pantone range of 3245 C through 3295 C) as a primary or dominant packaging color; (ii) the teal-and-white color combination as a packaging color scheme; (iii) the wave device or any similar curvilinear design element; and (iv) any other element that imitates or is confusingly similar to MCB's packaging trade dress as embodied in U.S. Reg. No. 5,589,320.

• Specify that Brindoval must submit specimens of its proposed replacement trade dress (for each SKU) to MCB at least thirty (30) days before the first commercial use of the replacement trade dress. MCB may provide written objections within that 30-day period, identifying with specificity the elements it contends create a likelihood of confusion.

• If MCB objects, the parties will meet and confer in good faith within ten (10) business days to attempt to resolve the objection. If the parties are unable to resolve the dispute within twenty (20) business days, either party may submit the matter to expedited mediation before a mutually agreed mediator, or, if the parties cannot agree on a mediator, to the Court retaining jurisdiction over the settlement.

• Include express language clarifying that MCB's review right does not constitute approval and does not create a quality-control, licensor-licensee, or any other supervisory relationship beyond the express terms of the Coexistence Agreement.

Drafting Notes: Prepare and include as exhibits to the agreement: (a) images of MCB's current MERIDIAN packaging trade dress (including the wave-device logo and teal-and-white color scheme), and (b) images of Brindoval's current and prohibited MERIDIAN FRESH packaging trade dress (teal-and-white color scheme with wave device), for reference and to provide clear benchmarks for the trade-dress prohibitions.

F. Quality Monitoring

Framework Term: Brindoval must provide MCB with product samples annually and permit one quality inspection per calendar year at Brindoval's facilities.

Analysis:

Quality monitoring is a standard component of trademark coexistence agreements. Its purpose is to protect MCB's brand reputation by ensuring that products sold under a mark containing "MERIDIAN" — which consumers may continue to associate, at some level, with MCB — meet reasonable quality standards and comply with the terms of the Coexistence Agreement. If Brindoval were to sell substandard or defective products under the BRINDOVAL MERIDIAN FRESH mark, the resulting consumer dissatisfaction could reflect negatively on MCB's MERIDIAN brand, even though MCB has no control over Brindoval's products.

However, the quality-monitoring provision must be carefully calibrated to avoid two pitfalls. First, overly intrusive quality-monitoring provisions may be resisted by Brindoval during negotiations and could be viewed as unduly burdensome. Second, and more importantly, aggressive quality-control provisions could be construed as creating a de facto licensor-licensee relationship, which would be inconsistent with the coexistence framework. A coexistence agreement is, by its nature, an agreement between independent parties who own and use their respective marks independently. If the quality-monitoring provision is too granular or gives MCB too much control over Brindoval's products, it may blur this distinction.

The framework term sheet's proposal of one annual inspection and annual product samples represents a reasonable middle ground that provides MCB with meaningful monitoring capability without creating the impression of a license relationship.

Recommendation:

• Require Brindoval to provide representative product samples (one of each active SKU bearing the BRINDOVAL MERIDIAN FRESH mark) to MCB within thirty (30) days of each anniversary of the effective date of the Coexistence Agreement.

• Permit MCB to conduct one (1) on-site inspection per calendar year at any Brindoval facility where BRINDOVAL MERIDIAN FRESH products are manufactured, packaged, stored, or distributed. MCB must provide not less than fifteen (15) business days' advance written notice before conducting any inspection. Inspections shall be conducted during normal business hours and shall not unreasonably interfere with Brindoval's operations.

• Define the scope of the inspection to include verification of: (a) compliance with the mark-modification requirements (type-size, font weight, unitary-mark format); (b) compliance with the trade-dress requirements (no teal-and-white color scheme, no wave device); (c) compliance with the channel restrictions (no evidence of distribution to Prohibited Channels); and (d) general product quality (confirmation that products are free from material defects and are consistent with the product samples previously provided).

• MCB must keep all inspection findings, including any proprietary information observed during inspections, strictly confidential, except as necessary to enforce the Coexistence Agreement. Inspection findings may not be disclosed to third parties, including MCB's competitors, suppliers, or customers.

• If MCB identifies a material deficiency during an inspection, MCB shall provide Brindoval with written notice specifying the deficiency and providing Brindoval with thirty (30) days to cure the deficiency. Persistent uncured deficiencies may constitute a material breach of the Coexistence Agreement.

Drafting Notes: Include express language distinguishing the quality-monitoring provision from a trademark license quality-control clause. The agreement should state that the quality-monitoring provision is intended solely to protect the goodwill associated with MCB's MERIDIAN marks and does not create a licensor-licensee relationship, an agency relationship, or any other supervisory relationship between the parties. Each party is solely responsible for the quality of its own products.

G. Non-Challenge Covenant

Framework Term: Brindoval covenants not to challenge the validity of MCB's U.S. Reg. Nos. 4,218,506 (MERIDIAN), 5,034,771 (MERIDIAN CLEAN), and 5,589,320 (MERIDIAN stylized logo with wave device).

Analysis:

The non-challenge covenant is one of the most important protective terms in the Coexistence Agreement. It prevents Brindoval from subsequently filing cancellation proceedings at the TTAB, or from asserting invalidity, genericness, abandonment, or other affirmative defenses in any future dispute, with respect to MCB's three trademark registrations. Without this covenant, Brindoval could, in theory, accept the settlement and then turn around and attack the validity of MCB's registrations — the very registrations that give MCB the leverage to enforce the coexistence restrictions.

Non-challenge covenants in trademark settlement and coexistence agreements are generally enforceable under federal and New York law. Courts routinely uphold such covenants on the theory that a party who has voluntarily entered into a settlement agreement should not be permitted to renege on the bargain by attacking the validity of the marks that formed the basis of the settlement. There are, however, recognized limits: a party cannot contractually waive the right to challenge a mark that has become truly generic, because genericness determinations implicate the public interest. In practice, this theoretical limitation rarely comes into play, and MCB's MERIDIAN marks are distinctive coined terms that are not at risk of genericness.

The scope of the covenant should extend beyond direct challenges by Brindoval to encompass indirect challenges as well. Brindoval should be prohibited not only from filing its own cancellation or invalidity proceedings, but also from voluntarily assisting, funding, encouraging, or providing evidence to any third party that challenges the validity of MCB's registrations. This prevents Brindoval from doing through a surrogate what it has agreed not to do directly.

Brindoval's pending counterclaim for declaratory judgment of non-infringement in the S.D.N.Y. action will be dismissed with prejudice as part of the settlement. The non-challenge covenant reinforces this dismissal by preventing Brindoval from raising similar challenges in any future proceeding.

Recommendation:

• Draft a broad non-challenge covenant covering all three of MCB's registrations (U.S. Reg. Nos. 4,218,506, 5,034,771, and 5,589,320), including any subsequent registrations that are continuations, divisions, or extensions of these registrations.

• Include a prohibition on Brindoval directly or indirectly challenging, opposing, petitioning to cancel, or seeking to invalidate MCB's registrations, or asserting in any legal proceeding that MCB's marks are invalid, generic, descriptive, abandoned, or otherwise unenforceable.

• Include a prohibition on Brindoval voluntarily assisting, funding, encouraging, or providing evidence or information to any third party for the purpose of challenging the validity or enforceability of MCB's registrations.

• The non-challenge covenant should survive termination of the Coexistence Agreement for any reason.

• Include a narrow carve-out only for compulsory legal process — i.e., Brindoval shall not be required to violate a lawful subpoena or court order requiring the production of documents or testimony in a proceeding involving MCB's marks, but Brindoval may not voluntarily initiate, participate in, or cooperate with any such challenge.

Drafting Notes: Use standard non-challenge covenant language. The covenant should be mutual to the extent that MCB likewise agrees not to challenge Brindoval's registration of BRINDOVAL MERIDIAN FRESH once the amended application (Serial No. 97/412,558) proceeds to registration, provided the registration conforms to the terms of the Coexistence Agreement.

H. Amendment of Brindoval's Pending Trademark Application

Framework Term: Brindoval must amend its 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.

Analysis:

The amendment of Brindoval's pending trademark application is a necessary corollary to the mark-modification and product-category restrictions set forth in the Coexistence Agreement. Without the amendment, Brindoval's pending application would continue to seek registration for "MERIDIAN FRESH" in its original form and with an unrestricted description of goods — an outcome inconsistent with the settlement. The amended application should align precisely with the terms of the Coexistence Agreement, both with respect to the modified mark ("BRINDOVAL MERIDIAN FRESH") and the narrowed description of goods (limited to the Permitted Products sold through Authorized Channels).

MCB's pending TTAB opposition (Opposition No. 91/278,415) will be withdrawn with Brindoval's consent, but the withdrawal should be contingent upon Brindoval's filing of the conforming amendment. This sequencing is critical: if MCB withdraws the opposition before Brindoval files the amendment, MCB loses its ability to block the original "MERIDIAN FRESH" application from proceeding to registration. The withdrawal should not be filed until Brindoval has filed the amendment and MCB has confirmed that the amendment conforms to the agreed terms.

Timing is also important. Brindoval should be required to file the amendment within a specified period after execution of the Coexistence Agreement — we recommend 30 days — and to provide MCB with a copy of the filed amendment and all subsequent USPTO correspondence regarding the application. MCB should have the contractual right to reinstate opposition proceedings (or file a new opposition) if Brindoval fails to file the amendment within the agreed timeframe or if the amendment does not conform to the agreed terms.

Recommendation:

• Require Brindoval to file the amendment to Serial No. 97/412,558 with the USPTO within thirty (30) days of execution of the Coexistence Agreement. The amendment must modify the mark from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" and amend the description of goods.

• The amended description of goods should read: "Household cleaning preparations, namely, all-purpose cleaning sprays, glass cleaners, disinfecting wipes, disinfecting sprays, and dish soap, sold exclusively through retail stores and electronic commerce websites owned and operated by Brindoval Home Goods Inc."

• Brindoval must provide MCB with a copy of the filed amendment within five (5) business days of filing, and must provide MCB with copies of all subsequent USPTO correspondence regarding the application (including Office Actions, Examiner's Amendments, and Notices of Allowance) within ten (10) business days of receipt.

• MCB's withdrawal of Opposition No. 91/278,415 is contingent upon and shall not be filed until (a) Brindoval has filed the conforming amendment, and (b) MCB has reviewed the filed amendment and confirmed in writing that it conforms to the terms of the Coexistence Agreement.

• If Brindoval fails to file the conforming amendment within 30 days, or if the filed amendment does not conform to the agreed terms and Brindoval fails to cure within fifteen (15) business days after receiving MCB's written notice of non-conformity, MCB shall have the right to continue prosecuting the TTAB opposition and to pursue all available legal remedies.

Drafting Notes: Coordinate the timing of the withdrawal of the TTAB opposition with the filing of the Joint Stipulation of Dismissal in S.D.N.Y. The two proceedings should be resolved in tandem to avoid any gap in MCB's ability to challenge Brindoval's use of the mark. The stipulated dismissal in S.D.N.Y. and the TTAB withdrawal should both be filed within one week of each other, with the TTAB withdrawal filed only after confirmation that the conforming amendment has been filed.

I. Liquidated Damages

Framework Term: Breach of channel or product-category restrictions triggers liquidated damages of $500,000 per occurrence plus actual damages.

Analysis:

The liquidated-damages provision is a key enforcement mechanism in the Coexistence Agreement. Its purpose is twofold: (1) to provide MCB with a predetermined, readily enforceable remedy for the most consequential types of breach — violations of the channel and product-category restrictions — without the burden of proving actual damages in each instance; and (2) to serve as a powerful deterrent against Brindoval's violation of these restrictions, which would be the most harmful categories of breach from MCB's perspective.

Liquidated-damages provisions are enforceable under New York law provided two conditions are met: (a) the amount bears a reasonable relationship to the probable loss, and (b) actual damages would be difficult to calculate at the time of contracting. See N.Y. UCC § 2-718; Northpoint Holdings v. Purdy Corp., 41 N.Y.2d 354, 365 (1977). Both conditions are satisfied here.

With respect to the first condition, the brand harm to MCB from Brindoval's distribution of BRINDOVAL MERIDIAN FRESH products through unauthorized channels or in prohibited product categories would be substantial. MCB's MERIDIAN cleaning line generates approximately $94.5 million in annual revenue. Unauthorized expansion by Brindoval — whether into third-party retail channels where MCB products are also sold, or into product categories (such as personal care or home fragrance) where MCB has established brand presence — could dilute the MERIDIAN brand, confuse consumers, and divert sales. A $500,000 per-occurrence amount is a fraction of the potential annual revenue impact and is reasonable in light of the stakes.

With respect to the second condition, the actual damages from a particular breach of the channel or product-category restrictions would be difficult to quantify precisely. The harm to MCB would include not only lost sales but also brand dilution, loss of consumer goodwill, and long-term reputational damage — intangible harms that are notoriously difficult to prove and calculate. A pre-set liquidated amount addresses this difficulty.

However, the definition of "occurrence" requires careful attention. Without a clear definition, disputes will arise over whether each individual sale constitutes a separate occurrence (which would result in potentially astronomical damages), or whether a broader unit of measurement applies. We recommend defining "occurrence" on a per-SKU, per-channel basis — i.e., each distinct combination of a specific product SKU and a specific Prohibited Channel constitutes a separate occurrence. For example, if Brindoval sells all-purpose cleaning spray on Amazon and glass cleaner on Walmart.com, that would constitute two occurrences ($1,000,000 in aggregate liquidated damages). This approach provides meaningful deterrence without being susceptible to an argument that the provision is a penalty.

The "plus actual damages" language in the framework term sheet is important: it ensures that MCB can recover beyond the liquidated amount if provable damages exceed $500,000 per occurrence. This is permissible under New York law where the agreement clearly provides that liquidated damages are a floor, not a ceiling, and that actual damages may be recovered to the extent they exceed the liquidated amount.

Recommendation:

• Set liquidated damages at $500,000 per occurrence as stated in the framework term sheet.

• Define "occurrence" as each instance of sale or distribution of a specific BRINDOVAL MERIDIAN FRESH SKU through a Prohibited Channel or in a Prohibited Product Category. Each distinct SKU/channel or SKU/product-category combination constitutes a separate occurrence.

• Include a provision that liquidated damages are cumulative with — not in lieu of — injunctive relief and actual damages. MCB may seek injunctive relief to enjoin the breach and may recover actual damages to the extent actual damages exceed the liquidated amount for any given occurrence.

• Place the liquidated-damages provision in §9.2 of the agreement for organizational clarity.

• Include an acknowledgment by both parties that the liquidated-damages amount is a reasonable estimate of anticipated harm arising from breach of the channel and product-category restrictions, that actual damages from such breaches would be difficult to calculate, and that the liquidated-damages provision does not constitute a penalty.

• Anticipate Brindoval's likely pushback on this provision. Brindoval may seek (a) a lower per-occurrence amount, (b) an aggregate cap on liquidated damages, or (c) a cure period before liquidated damages begin to accrue. We recommend resisting any reduction in the per-occurrence amount and any aggregate cap, as these would undermine the deterrent effect of the provision. However, we recommend accepting a reasonable cure period of thirty (30) days — i.e., MCB must provide written notice of the breach and Brindoval will have 30 days to cure before liquidated damages begin to accrue — with an express exception for willful breaches, which should trigger liquidated damages immediately upon the breach without any cure period.

Drafting Notes: The cure-period exception for willful breaches should define "willful" as a breach that Brindoval knew or should have known constituted a violation of the channel or product-category restrictions at the time of the breach. This would include, for example, an affirmative decision to list BRINDOVAL MERIDIAN FRESH products on Amazon, which could not plausibly be inadvertent.

J. Term and Termination

Framework Term: Perpetual, unless terminated by mutual written consent or material breach.

Analysis:

A perpetual term is standard and appropriate for a trademark coexistence agreement. The parties' respective trademark rights are ongoing in nature — MCB's registrations do not expire (assuming proper maintenance), and Brindoval's use of the BRINDOVAL MERIDIAN FRESH mark will continue indefinitely. The coexistence restrictions must therefore endure for as long as Brindoval uses any mark incorporating "MERIDIAN." A fixed term would create the anomalous result of the restrictions expiring after a period of years, potentially allowing Brindoval to revert to "MERIDIAN FRESH" or expand into prohibited channels and product categories.

The framework term sheet identifies two termination triggers: mutual written consent and material breach. Both are appropriate. However, the material-breach termination provision requires careful drafting to ensure that MCB has clear remedies in the event of a breach while also providing Brindoval with reasonable procedural protections.

For non-willful material breaches, a notice-and-cure period is appropriate — we recommend 60 days. This period gives Brindoval a meaningful opportunity to remedy a breach before MCB can terminate the agreement and pursue litigation. However, certain breaches (such as willful violations of the channel or product-category restrictions) should not be subject to a cure period, because the harm to MCB from such breaches is immediate and ongoing.

Upon termination for Brindoval's material breach, MCB should have the right to pursue all available legal remedies, including claims under the Lanham Act, New York GBL § 360-l, and any other applicable statute, without regard to the settlement payment previously made or the dismissal of the prior action. In effect, termination for breach should restore MCB to its pre-settlement position with respect to legal remedies, while allowing MCB to retain the settlement payment.

A survival clause is essential. Certain provisions must survive termination to ensure continued enforceability of the most critical protections:

• The non-challenge covenant (Part III.G) should survive termination in perpetuity, regardless of the reason for termination.

• The confidentiality provisions should survive termination.

• The liquidated-damages provision should survive termination with respect to any pre-termination breaches (i.e., MCB should be able to recover liquidated damages for breaches that occurred before termination, even if the enforcement action is commenced after termination).

• The settlement-payment obligation should survive termination — if the Coexistence Agreement is terminated for Brindoval's breach before the settlement payment has been released from escrow, the settlement payment should still be released to MCB.

Additionally, if Brindoval voluntarily ceases all use of the BRINDOVAL MERIDIAN FRESH mark, the Coexistence Agreement should remain in effect. This prevents Brindoval from ceasing use for a period of time, allowing the agreement to lapse, and then resuming infringing use of "MERIDIAN FRESH" (without the "BRINDOVAL" prefix) in the future.

Recommendation:

• Perpetual term, with termination only upon: (a) mutual written consent of both parties, or (b) material uncured breach, with a sixty (60)-day notice and cure period for non-willful material breaches. Willful material breaches (defined to include intentional violations of the channel restrictions, product-category restrictions, or trade-dress requirements) are not subject to a cure period and entitle MCB to terminate immediately upon written notice.

• Upon termination for Brindoval's material breach, MCB may pursue any and all available legal remedies, including claims under 15 U.S.C. §§ 1114(1) and 1125(a), N.Y. GBL § 360-l, and any other applicable federal, state, or common-law claims, without regard to the settlement payment previously made or the prior dismissal of the S.D.N.Y. action.

• Survival clause: The following provisions shall survive termination of the Coexistence Agreement: (i) the non-challenge covenant (in perpetuity); (ii) the confidentiality provisions; (iii) the liquidated-damages provision (with respect to pre-termination breaches); (iv) the settlement-payment obligation; and (v) the governing-law and dispute-resolution provisions.

• The Coexistence Agreement shall remain in full force and effect notwithstanding Brindoval's voluntary cessation of use of the BRINDOVAL MERIDIAN FRESH mark.

Drafting Notes: Address the interaction between the perpetual term and the dismissal with prejudice in S.D.N.Y. The proposed Order of Dismissal should include a provision expressly providing that the Court retains jurisdiction to enforce the Coexistence Agreement. This is important because, once the case is dismissed with prejudice, MCB would ordinarily need to file a new action to enforce the agreement. Retention of jurisdiction allows MCB to enforce the agreement through a motion in the existing case, which is more efficient and provides the benefit of continuity before a judge already familiar with the dispute.

K. Governing Law and Dispute Resolution

Framework Term: New York governing law.

Analysis:

New

PRIVILEGED AND CONFIDENTIAL ATTORNEY WORK PRODUCT / ATTORNEY-CLIENT COMMUNICATION
CALDERWOOD & HARKNESS LLP 1251 Avenue of the Americas, 40th Floor New York, NY 10020
MEMORANDUM
TO: Alan Ngo, Responsible Partner, intellectual Property
FROM: Christy Bauer, Lead Associate, intellectual Property
DATE: February 28, 2023
RE: Proposed Coexistence Agreement Terms — Analysis and Recommendations
MATTER: Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., C&H Matter No. 1011-00003 (Billing Code 11470-001); S.D.N.Y. Case No. 1:22-cv-09483 (Hon. Patricia M. Albright); TTAB Opposition No. 91/278,415
I. Executive Summary
The purpose of this memorandum is to analyze each substantive term from the framework term sheet reached at the February 15, 2023 court-ordered mediation before retired Judge Harold K. Novotny of Novotny ADR Services LLC, and to recommend specific drafting approaches and negotiation positions for the definitive Trademark Coexistence Agreement between Meridian Consumer Brands LLC ("MCB") and Brindoval Home Goods Inc. ("Brindoval").
As you are aware, the mediation yielded a framework term sheet that the parties initialed on February 15, 2023. The parties agreed to continue negotiating a comprehensive coexistence agreement to resolve both the pending federal court action (S.D.N.Y. Case No. 1:22-cv-09483) and the TTAB opposition proceeding (Opposition No. 91/278,415). Per your February 16, 2023 letter to Thomas R. Hennessy, MCB's General Counsel, the framework contemplates five principal components:
(1) a one-time settlement payment in the range of $1.2 million to $1.5 million;
(2) mark modification to include the "BRINDOVAL" prefix;
(3) channel and product-category restrictions;
(4) trade-dress changes formalizing and making permanent the relief obtained in the January 9, 2023 preliminary injunction order; and
(5) a non-challenge covenant.
This memorandum addresses each of these terms in detail. In addition, the memorandum analyzes several additional provisions necessary for a comprehensive agreement that were not expressly enumerated in the framework term sheet but that are standard components of trademark coexistence agreements and essential to the enforceability and completeness of the definitive agreement. These additional provisions include quality monitoring, liquidated damages, term and termination, governing law and dispute resolution, escrow mechanics for the settlement payment, amendment of Brindoval's pending trademark application, and mutual release and dismissal provisions.
Recommendation: We recommend targeting a settlement payment of $1,350,000, coupled with robust use restrictions and enforcement mechanisms as detailed in Parts III and IV below. We further recommend preparing an initial draft of the Trademark Coexistence Agreement for circulation to Halverson McKay & Pruitt LLP ("HMP"), Brindoval's counsel, no later than the week of March 6, 2023. This timeline will allow the parties to negotiate open issues and target execution by mid-May 2023, consistent with the general expectations communicated during the mediation.
II. Background
A. MCB's Trademark Portfolio
MCB holds the following federal trademark registrations relevant to this matter:
All three registrations are active and in good standing. Maintenance filings under Sections 8 and 15 of the Lanham Act have been timely made for U.S. Reg. No. 4,218,506, which now enjoys incontestable status. U.S. Reg. Nos. 5,034,771 and 5,589,320 have not yet reached the five-year threshold for Section 15 declarations, but both remain valid and enforceable.
MCB's MERIDIAN cleaning product line generated approximately $94.5 million in revenue in fiscal year 2022, representing approximately 24.4% of MCB's total revenue of $387 million. The MERIDIAN cleaning line is MCB's flagship brand and its single largest revenue source. Cumulative advertising expenditures on the MERIDIAN cleaning line from 2011 through 2022 total approximately $47.2 million, reflecting an average annual spend of approximately $3.93 million over the twelve-year period. These figures, drawn from MCB's internal financial data produced in initial disclosures, are relevant to the damages analysis discussed in Part III.A below and to the reasonableness of the proposed liquidated-damages provision discussed in Part III.I below.
MCB is a Delaware limited liability company headquartered at 450 Park Avenue South, 14th Floor, New York, New York 10016. MCB is majority-owned by Waypoint Capital Partners LLC, a private equity firm that acquired MCB in 2019 for approximately $625 million. The Waypoint acquisition is relevant to the extent that MCB's brand-protection strategy is closely monitored by its PE sponsor, and favorable resolution of this matter is a priority for MCB's management and board.
B. Brindoval's Infringing Activities
Brindoval Home Goods Inc. is a Minnesota corporation headquartered at 7200 France Avenue South, Suite 300, Edina, Minnesota 55435. Brindoval is a large, publicly traded home-goods retailer with fiscal year 2022 revenue of approximately $2.1 billion. Brindoval operates 148 retail stores across 12 Midwestern and Mountain West states (Minnesota, Wisconsin, Iowa, Illinois, Michigan, Indiana, North Dakota, South Dakota, Nebraska, Montana, Wyoming, and Colorado) and a nationwide e-commerce platform accessible at www.crestviewhomegoods.com.
In July 2022, Brindoval launched a private-label cleaning product line under the mark "MERIDIAN FRESH" in International Class 3. The MERIDIAN FRESH line includes four product SKUs: an all-purpose cleaning spray, a glass cleaner, disinfecting wipes, and dish soap. The products were initially offered across all 148 Brindoval retail stores and on the Brindoval e-commerce platform.
Prior to launch, Brindoval filed a trademark application with the United States Patent and Trademark Office on May 12, 2022, under Serial No. 97/412,558, seeking registration of MERIDIAN FRESH in International Class 3. The application was published for opposition on September 6, 2022.
The MERIDIAN FRESH products were packaged in a teal-and-white color scheme with a stylized wave device that is confusingly similar to MCB's registered wave-device logo (U.S. Reg. No. 5,589,320). The combined effect of the nearly identical word mark and the confusingly similar trade dress created a significant likelihood of consumer confusion, as confirmed by Dr. Elaine Furman's consumer confusion survey discussed below.
Brindoval's MERIDIAN FRESH line generated gross revenue of approximately $6.8 million from its July 2022 launch through November 2022 — a five-month period. Annualized, this figure projects to approximately $16.32 million. These revenue figures, provided in Brindoval's initial disclosures, are relevant both to MCB's potential disgorgement claim and to the overall damages analysis underlying the settlement payment negotiation.
C. Current Procedural Posture
The procedural history of this matter may be summarized as follows:
Cease-and-Desist Phase. MCB sent a cease-and-desist letter to Brindoval on September 26, 2022, identifying MCB's trademark registrations, detailing the confusing similarity between MERIDIAN FRESH and MCB's MERIDIAN and MERIDIAN CLEAN marks, and demanding that Brindoval immediately cease all use of the MERIDIAN FRESH mark and withdraw its pending trademark application. On October 10, 2022, Gregory T. Halverson of Halverson McKay & Pruitt LLP, responding on behalf of Brindoval, denied infringement, asserted that the marks were sufficiently distinct, and declined to cease use.
TTAB Opposition. On October 14, 2022, MCB filed a Notice of Opposition at the Trademark Trial and Appeal Board (Opposition No. 91/278,415), opposing registration of Brindoval's MERIDIAN FRESH mark on the grounds of likelihood of confusion with MCB's prior registrations.
Federal Court Action. On November 7, 2022, MCB filed its Complaint in the United States District Court for the Southern District of New York (Case No. 1:22-cv-09483, assigned to the Honorable Patricia M. Albright), asserting claims for federal trademark infringement under 15 U.S.C. § 1114(1), false designation of origin under 15 U.S.C. § 1125(a), and injury to business reputation and dilution under New York General Business Law § 360-l. MCB simultaneously moved for a preliminary injunction and temporary restraining order. Brindoval answered and filed a counterclaim for declaratory judgment of non-infringement.
Preliminary Injunction Ruling. On January 9, 2023, Judge Albright issued a Memorandum and Order granting MCB's motion for a preliminary injunction in part and denying it in part. Specifically, the Court ordered Brindoval to modify its packaging trade dress within 45 days by (i) removing the wave device and (ii) changing the teal-and-white color scheme. However, the Court declined to enjoin Brindoval's use of the word mark "MERIDIAN FRESH" pending trial, finding that MCB had not demonstrated a sufficiently clear likelihood of success on the merits with respect to the word mark alone, divorced from the trade dress. The Court noted the "close question" posed by the word mark and reserved judgment for trial on the full merits.
Consumer Confusion Survey. Dr. Elaine Furman of Lakeshore Brand Consulting LLC conducted a consumer confusion survey in October 2022 using a Squirt/modified Eveready protocol. The survey involved 612 respondents drawn from MCB's target demographic. The survey yielded a raw confusion rate of 38.6%, reduced to a net confusion rate of 31.4% after subtracting the 7.2% control-group noise. A net confusion rate exceeding 15%–20% is generally considered strong evidence of likelihood of confusion in the Second Circuit. Dr. Furman's survey report and supporting data were disclosed to Brindoval in MCB's initial disclosures on January 23, 2023. MCB incurred $87,500 in fees to Lakeshore Brand Consulting for the survey.
Initial Disclosures and discovery. The parties exchanged initial disclosures on January 23, 2023. Fact discovery is ongoing, though no depositions have yet been taken.
Mediation. On February 15, 2023, the parties participated in a court-ordered mediation before retired Judge Harold K. Novotny of Novotny ADR Services LLC. The mediation resulted in a framework term sheet initialed by both parties, which serves as the basis for the analysis in this memorandum.
III. Analysis of Proposed Terms
A. Settlement Payment
Framework Term: One-time lump-sum payment in the range of $1.2 million to $1.5 million from Brindoval to MCB.
Analysis:
The framework term sheet establishes a negotiating range for the monetary component of the settlement. To evaluate the reasonableness of this range and identify our recommended target within it, it is necessary to consider MCB's damages exposure if the case were litigated to trial, the costs of continued litigation, and the overall settlement dynamics.
MCB's damages theories, if the case proceeded to trial, would include the following:
(a) Lost Profits Attributable to Diverted Sales. MCB would argue that a portion of Brindoval's MERIDIAN FRESH sales were diverted from MCB's MERIDIAN cleaning line. Given the 31.4% net confusion rate and the overlapping product categories, MCB could plausibly claim that a meaningful percentage of Brindoval's $16.32 million in annualized revenue represents sales that would otherwise have gone to MCB's MERIDIAN products. Even applying conservative attribution assumptions, the lost-profits figure could be significant.
(b) Reasonable Royalty Theory. As an alternative measure, MCB could seek a reasonable royalty — i.e., the amount Brindoval would have paid for a license to use the MERIDIAN mark. Given the strength of MCB's marks and the premium associated with the MERIDIAN brand, a reasonable royalty rate in the range of 5%–8% of Brindoval's MERIDIAN FRESH revenue would be defensible, yielding royalty damages in the range of $816,000–$1,305,600 on annualized revenue of $16.32 million, and growing with each additional year of use prior to trial.
(c) Disgorgement of Brindoval's Profits. Under 15 U.S.C. § 1117(a), MCB could seek disgorgement of Brindoval's profits attributable to the infringement. Brindoval's $6.8 million in gross revenue over five months provides a baseline, though MCB would need to prove that the profits were attributable to Brindoval's use of the infringing mark rather than other factors. Even after deducting Brindoval's costs and allowing for apportionment, the potential disgorgement figure could be substantial.
Against these potential recoveries, several factors counsel in favor of settlement. MCB's total matter costs to date are significant, encompassing attorney fees incurred by this firm, the $87,500 paid to Lakeshore Brand Consulting for Dr. Furman's survey, and mediation costs. Continued litigation through trial — including depositions, expert discovery, pre-trial motions, and trial itself — would substantially increase these costs. Moreover, while MCB's claims are strong, the Court's refusal to enjoin the word mark on the preliminary injunction motion introduces an element of uncertainty regarding the outcome at trial. The Court characterized the word-mark question as a "close" one, which means that trial on the merits is not a foregone conclusion in MCB's favor with respect to the MERIDIAN FRESH word mark standing alone.
Balancing the strength of MCB's claims (31.4% net confusion, favorable PI ruling on trade dress, incontestable status of U.S. Reg. No. 4,218,506) against the costs and uncertainties of continued litigation, and considering the substantial prospective brand-protection value of the coexistence restrictions that will accompany the monetary payment, the proposed range of $1.2 million to $1.5 million is reasonable.
Recommendation: We recommend targeting $1,350,000 as the final agreed settlement amount. This figure falls at the midpoint of the mediated range and represents a reasonable recovery when combined with the prospective brand-protection value of the use restrictions, channel limitations, product-category restrictions, and trade-dress requirements that will be embedded in the Coexistence Agreement. The payment should be structured as a single lump sum — not as royalties, installments, or ongoing payments — to achieve a clean, final resolution of the monetary component. A lump-sum structure avoids the administrative burden of ongoing royalty calculations and eliminates the risk of payment disputes or defaults over time.
Drafting Notes:
• Include clear payment timing: Brindoval shall deposit the settlement amount into escrow within ten (10) business days of execution of the Coexistence Agreement.
• Structure the escrow mechanics through a neutral escrow agent. We recommend designating Dralvecen National Bank as the escrow agent, given MCB's existing banking relationship with that institution. The escrow mechanics are discussed in greater detail in Part III.L below.
• The release of escrowed funds to MCB should be contingent on entry of the Order of Dismissal with Prejudice in S.D.N.Y. Case No. 1:22-cv-09483.
• Include a provision specifying that the settlement payment constitutes consideration for the mutual releases and the Coexistence Agreement as a whole, and is not an admission of liability by Brindoval.
B. Mark Modification
Framework Term: Brindoval must rebrand from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH," with the word "BRINDOVAL" appearing in no less than 75% of the type size of "MERIDIAN FRESH."
Analysis:
The addition of the "BRINDOVAL" prefix to the MERIDIAN FRESH mark is a core element of the coexistence framework and a standard mechanism in trademark coexistence agreements. The prefix "BRINDOVAL" — which is Brindoval's own house mark and the name under which it has built substantial consumer recognition over many years — serves as a source-identifier that distinguishes Brindoval's products from MCB's MERIDIAN and MERIDIAN CLEAN marks. When consumers encounter "BRINDOVAL MERIDIAN FRESH," the prominent inclusion of the Brindoval house mark should substantially reduce the likelihood of confusion by directing consumer attention to the Brindoval source and away from any association with MCB.
The 75% minimum type-size requirement is a critical safeguard. Without a robust type-size requirement, Brindoval could technically comply with the prefix requirement while rendering "BRINDOVAL" in small, easily overlooked text, thereby undermining the purpose of the mark modification. The 75% minimum ensures that "BRINDOVAL" is visually prominent on all packaging, advertising, and digital displays, and is not buried in fine print or subordinated to "MERIDIAN FRESH" in a way that recreates the original confusion.
However, several implementation issues require attention in the drafting:
Type-Size Measurement. The framework term sheet refers to "type size" without specifying whether the 75% requirement applies to the height of the typeface, the overall area of the lettering, or both. These are distinct measurements, and ambiguity could lead to disputes. For example, Brindoval could use a condensed font for "BRINDOVAL" that meets a height requirement but appears significantly smaller in overall visual impact due to narrow character width. We recommend specifying that the 75% requirement applies to the height of the typeface at minimum, measured from baseline to cap height, and that the "BRINDOVAL" text must be rendered in a font weight and width that is at least comparable to that of "MERIDIAN FRESH" such that it is equally legible and visually prominent.
Unitary Mark Requirement. The modified mark "BRINDOVAL MERIDIAN FRESH" must be used as a single, unitary mark. This means that "BRINDOVAL" and "MERIDIAN FRESH" must appear together in a single location on the packaging, advertising, or display — not separated from one another (e.g., "BRINDOVAL" on the top of the package and "MERIDIAN FRESH" on the bottom, or "BRINDOVAL" in a different color or font style that visually separates it from "MERIDIAN FRESH"). The purpose of the prefix is defeated if consumers encounter "MERIDIAN FRESH" in isolation, with the "BRINDOVAL" identifier relegated to a distant portion of the packaging.
Rebranding Deadline. The framework term sheet does not specify a deadline for completing the rebranding across all products and channels. Given the complexity of packaging redesign, production runs, distribution logistics, and the need to deplete or destroy existing inventory bearing the unmodified "MERIDIAN FRESH" mark, a reasonable period must be established. We recommend 120 days from execution of the Coexistence Agreement, which provides ample time for Brindoval to complete the rebranding while ensuring that MCB's interests are not prejudiced by an excessively long transition period.
Existing Inventory. All existing inventory bearing the unmodified "MERIDIAN FRESH" mark — i.e., products that do not include the "BRINDOVAL" prefix — must be sold through or destroyed within the same 120-day rebranding period. Brindoval should not be permitted to continue selling unmodified inventory indefinitely under the guise of a sell-through period. The 120-day period is sufficient for Brindoval to deplete existing stock given the relatively modest sales volume of the MERIDIAN FRESH line (approximately $1.36 million per month).
Recommendation:
• Insist on the 75% minimum type-size requirement as a non-negotiable term. Specify that the requirement applies to the height of the typeface at minimum, and that the "BRINDOVAL" text must be rendered in a font weight and width at least comparable to that of "MERIDIAN FRESH."
• Set a rebranding deadline of 120 days from execution of the Coexistence Agreement.
• Require that the modified mark "BRINDOVAL MERIDIAN FRESH" be used as a single unitary mark — no separation of "BRINDOVAL" from "MERIDIAN FRESH" on packaging, advertising, or in any other context.
• Require that all existing inventory bearing the unmodified "MERIDIAN FRESH" mark be sold through or destroyed within the same 120-day period. Brindoval must certify in writing to MCB upon expiration of the 120-day period that no unmodified inventory remains in any distribution channel.
Drafting Notes: Include a specimen-approval provision requiring Brindoval to submit initial specimens of the rebranded packaging (for each SKU) to MCB for confirmation of compliance with the type-size, font-weight, and unitary-mark requirements before commercial launch of the rebranded products. We propose placing the type-size specification in §3.1(b) of the agreement and the rebranding timeline and inventory provisions in §3.2.
C. Channel Restrictions
Framework Term: Brindoval may use the modified mark "BRINDOVAL MERIDIAN FRESH" only (a) in Brindoval-branded retail stores and (b) on Brindoval's own e-commerce platform (www.crestviewhomegoods.com). Use on third-party retail platforms (e.g., Amazon, Walmart.com) or in wholesale distribution is prohibited.
Analysis:
Channel restrictions are essential to limiting the zones of contact between Brindoval's modified mark and MCB's MERIDIAN marks. MCB distributes its MERIDIAN cleaning products through a broad range of channels, including major grocery chains, club warehouses, mass-market retailers, drug stores, and leading e-commerce platforms (including Amazon, Walmart.com, and Adriatic Corporation) in all 50 states and the District of Columbia. The breadth of MCB's distribution means that virtually any expansion of Brindoval's MERIDIAN FRESH products beyond Brindoval's own retail channels would create points of contact — and therefore potential confusion — between the two brands.
By confining Brindoval's use of the BRINDOVAL MERIDIAN FRESH mark to its own retail stores and its own e-commerce platform, the channel restriction substantially reduces the likelihood of consumer confusion in the marketplace. Consumers shopping in Brindoval-branded stores or on the Brindoval website are already in a context that identifies Brindoval as the source, which reinforces the source-distinguishing function of the "BRINDOVAL" prefix. In contrast, if Brindoval's products were sold on Amazon or in grocery stores alongside MCB's MERIDIAN products, the modified mark might be less effective at preventing confusion, particularly if consumers encounter the products side by side on a shelf or in search results.
Brindoval currently operates 148 stores across 12 Midwestern and Mountain West states. Its geographic footprint is distinctly regional, whereas MCB's distribution is national. The channel restrictions reinforce this natural geographic separation by preventing Brindoval from expanding the distribution of BRINDOVAL MERIDIAN FRESH products into channels where MCB's MERIDIAN products are already present.
Several definitional and scope issues require attention:
Definition of "Brindoval-Branded Retail Stores." The channel restriction must define this term with precision. "Brindoval-branded retail stores" should include only brick-and-mortar stores that are owned and operated directly by Brindoval Home Goods Inc. or its wholly-owned subsidiaries. The definition should exclude (i) stores operated by franchisees or licensees (to the extent Brindoval expands into franchising in the future), (ii) third-party retailers that may carry Brindoval-branded products on their shelves, (iii) pop-up stores or temporary retail locations not operated by Brindoval, and (iv) store-within-a-store concepts where Brindoval might operate a branded section within a third-party retailer's store. The definition should, however, include future Brindoval-owned retail locations (i.e., new stores opened by Brindoval after the date of the agreement), as well as outlet locations directly operated by Brindoval.
E-Commerce Restriction. The restriction on e-commerce sales should encompass not only third-party marketplace platforms such as Amazon, Walmart.com, Adriatic Corporation, and Cascade Holdings, but also third-party fulfillment or drop-ship arrangements where Brindoval products would appear on or be sold through non-Brindoval websites, even if Brindoval itself fulfills the order. The relevant concern is the consumer-facing channel — if a consumer encounters a BRINDOVAL MERIDIAN FRESH product on a third-party website, the channel restriction is violated regardless of the fulfillment logistics.
Digital Advertising. Channel restrictions in the physical and e-commerce retail context do not, by themselves, address digital advertising and social media marketing. Brindoval's digital advertisements — including paid search ads, social media posts, display advertisements, and influencer marketing — could appear to consumers nationwide, regardless of where those consumers ultimately purchase the product. This could blur the channel distinction and create consumer confusion in contexts where the "BRINDOVAL" prefix may not be as prominent (e.g., small-format mobile ads). The agreement should address digital advertising by permitting Brindoval to advertise the BRINDOVAL MERIDIAN FRESH line online, provided that (a) all digital advertisements clearly identify Brindoval Home Goods Inc. as the source, (b) digital advertisements direct consumers only to Brindoval's own channels (i.e., Brindoval retail stores and www.crestviewhomegoods.com), and (c) Brindoval does not bid on or purchase MCB's "MERIDIAN" or "MERIDIAN CLEAN" marks as search-engine keywords.
Licensing Prohibition. The channel restriction should be reinforced by an express prohibition on licensing the modified mark to any third party. If Brindoval were to license "BRINDOVAL MERIDIAN FRESH" to a third-party manufacturer, retailer, or distributor, that third party's use of the mark could extend beyond the authorized channels and product categories, defeating the purpose of the coexistence restrictions.
Recommendation:
• Define "Brindoval-Branded Retail Channels" narrowly: brick-and-mortar retail stores owned and operated by Brindoval Home Goods Inc. or its wholly-owned subsidiaries, and the Brindoval e-commerce domain (www.crestviewhomegoods.com), including any successor domain directly operated by Brindoval.
• Expressly prohibit sales through third-party e-commerce marketplaces, wholesale distributors, grocery or club channels, drug stores, mass-market retailers, and any retail channel where MCB's MERIDIAN products are also sold.
• Address digital advertising by permitting Brindoval to advertise the BRINDOVAL MERIDIAN FRESH line online, provided that all advertisements clearly identify Brindoval as the source, direct consumers exclusively to Brindoval's own authorized channels, and do not bid on MCB's MERIDIAN or MERIDIAN CLEAN trademarks as search-engine keywords.
• Include an express prohibition on licensing the modified mark to any third party for any purpose.
Drafting Notes: Define the terms "Authorized Channels" and "Prohibited Channels" in the definitions section of the agreement. Tie breach of channel restrictions to the liquidated-damages provision (§9.2), such that any sale or distribution through a Prohibited Channel constitutes a breach triggering the liquidated-damages remedy.
D. Product-Category Restrictions
Framework Term: Brindoval may use the modified mark only for household cleaning products in International Class 3. Expansion into personal care, home fragrance, or laundry detergent products under any mark incorporating "MERIDIAN" is prohibited.
Analysis:
MCB operates across multiple product lines within and adjacent to International Class 3, including household cleaning products (the MERIDIAN line), personal care products, and home fragrance products. The product-category restriction is designed to protect MCB's existing and adjacent product categories from encroachment by Brindoval and to preserve MCB's ability to expand the MERIDIAN brand into new categories — including laundry detergent, which MCB has identified as a potential future category — without encountering Brindoval's mark.
However, International Class 3 is extremely broad. It encompasses cleaning preparations, polishing preparations, abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, and dentifrices, among other goods. A restriction that merely limits Brindoval to "IC 3" would not adequately protect MCB's interests, because Brindoval could expand into personal care products (which also fall within IC 3), home fragrance products (which may fall within IC 3 or IC 4 depending on the specific product), or other sub-categories that are adjacent to MCB's existing product lines.
The restriction should therefore be more specific than "IC 3." It should enumerate the specific products that Brindoval is permitted to sell under the BRINDOVAL MERIDIAN FRESH mark — i.e., the current MERIDIAN FRESH product assortment — and prohibit all other uses of any mark containing "MERIDIAN" on any product, regardless of International Class.
It is also important to address Brindoval's potential use of the word "MERIDIAN" without the "FRESH" suffix. The coexistence agreement should clearly prohibit Brindoval from using "MERIDIAN" alone or in any combination other than "BRINDOVAL MERIDIAN FRESH" on any products. This prevents Brindoval from launching a separate "MERIDIAN" branded line or from dropping the "FRESH" suffix to bring its mark closer to MCB's marks.
Recommendation:
• Define "Permitted Products" as a closed, enumerated list: all-purpose cleaning sprays, glass cleaners, disinfecting wipes, disinfecting sprays, and dish soap — i.e., the five product types currently comprising the MERIDIAN FRESH product assortment.
• Expressly prohibit expansion to any other product category under any mark containing "MERIDIAN" (whether "BRINDOVAL MERIDIAN FRESH" or any other formulation), including but not limited to: personal care products, home fragrance products, laundry detergent, air fresheners, candles, bath products, cosmetics, dentifrices, polishing preparations, and any product not included in the "Permitted Products" definition.
• Expressly prohibit Brindoval from using "MERIDIAN" alone or in any mark formulation other than "BRINDOVAL MERIDIAN FRESH" (e.g., "BRINDOVAL MERIDIAN," "MERIDIAN HOME," "MERIDIAN PURE," etc.).
• Include a "new product" provision: if Brindoval wishes to introduce additional household cleaning products (beyond the initial enumerated Permitted Products) under the BRINDOVAL MERIDIAN FRESH mark, Brindoval must provide MCB with sixty (60) days' advance written notice describing the proposed new product. MCB will have the right to object in writing within thirty (30) days of receiving such notice. If MCB objects, the parties shall meet and confer in good faith to attempt to resolve the dispute. If the parties are unable to resolve the dispute within an additional thirty (30) days, either party may submit the matter to binding arbitration or mediation as provided in the dispute-resolution clause.
Drafting Notes: Align the product-category restriction with the description-of-goods limitation that Brindoval must include in its amended trademark application (Serial No. 97/412,558), as discussed in Part III.H below. Consistency between the coexistence agreement and the amended application description is essential to avoid conflicts or gaps.
E. Trade-Dress Requirements
Framework Term: Brindoval must permanently discontinue the teal-and-white color scheme and the wave device. Replacement trade dress must be submitted to MCB for review (not approval) at least 30 days before commercial use.
Analysis:
The trade-dress provisions of the Coexistence Agreement serve to formalize and make permanent what the Court has already ordered on a preliminary basis. Judge Albright's January 9, 2023 preliminary injunction order required Brindoval to remove the wave device and change the teal-and-white color scheme within 45 days, but that order is interlocutory in nature and would be superseded by a final disposition of the case. The Coexistence Agreement should memorialize the trade-dress restrictions as permanent, contractual obligations that survive the dismissal of the federal court action.
The distinction between "review" and "approval" is important from both a practical and legal standpoint. If MCB were granted an "approval" right — i.e., a veto over Brindoval's replacement trade dress — this could be characterized as a form of quality control that implies a licensor-licensee relationship. Such a characterization would be inconsistent with the coexistence framework, which is predicated on the parties' independent ownership and use of their respective marks. An implied license relationship could create complications under trademark law, including potential arguments that MCB has engaged in naked licensing or that the coexistence arrangement is in substance a trademark license subject to different legal standards. The "review" right avoids these complications while still providing MCB with a meaningful opportunity to object if the replacement trade dress creates new confusion.
That said, the "review" right must be accompanied by a mechanism for resolving objections. If MCB reviews Brindoval's proposed replacement trade dress and identifies confusingly similar elements, the parties need a process for resolving the dispute — otherwise the review right is toothless. We recommend a tiered approach: if MCB objects in writing within the 30-day notice period, the parties will meet and confer in good faith; if the objection is not resolved, the dispute may be submitted to expedited mediation or arbitration, or referred to the Court retaining jurisdiction over the settlement.
The agreement should define the prohibited trade-dress elements with specificity to avoid ambiguity:
(i) Teal Color. The prohibition should reference a specific Pantone color or range. Brindoval's current teal is approximately Pantone 3282 C. The prohibition should cover teal as a primary or dominant packaging color, not merely the exact Pantone shade. Brindoval could otherwise make a minor adjustment to the shade of teal and argue technical compliance. We recommend defining the prohibition as covering any shade of teal, aqua, or turquoise as a primary or dominant packaging color — i.e., any color in the Pantone range of approximately 3245 C through 3295 C and functional equivalents.
(ii) White Background. The prohibition on the "teal-and-white color scheme" should clarify that the concern is the combination of teal as a primary color against a predominantly white background. White alone is not protectable, but the combination of teal and white is the specific trade-dress element at issue.
(iii) Wave Device. The prohibition should cover the specific wave device used by Brindoval, as well as any curvilinear design element that imitates or is confusingly similar to MCB's registered wave-device logo (U.S. Reg. No. 5,589,320). This prevents Brindoval from making minor modifications to the wave device and claiming it is a new, non-infringing design.
Recommendation:
• Require permanent discontinuation of: (i) teal (any shade of teal, aqua, or turquoise in the approximate Pantone range of 3245 C through 3295 C) as a primary or dominant packaging color; (ii) the teal-and-white color combination as a packaging color scheme; (iii) the wave device or any similar curvilinear design element; and (iv) any other element that imitates or is confusingly similar to MCB's packaging trade dress as embodied in U.S. Reg. No. 5,589,320.
• Specify that Brindoval must submit specimens of its proposed replacement trade dress (for each SKU) to MCB at least thirty (30) days before the first commercial use of the replacement trade dress. MCB may provide written objections within that 30-day period, identifying with specificity the elements it contends create a likelihood of confusion.
• If MCB objects, the parties will meet and confer in good faith within ten (10) business days to attempt to resolve the objection. If the parties are unable to resolve the dispute within twenty (20) business days, either party may submit the matter to expedited mediation before a mutually agreed mediator, or, if the parties cannot agree on a mediator, to the Court retaining jurisdiction over the settlement.
• Include express language clarifying that MCB's review right does not constitute approval and does not create a quality-control, licensor-licensee, or any other supervisory relationship beyond the express terms of the Coexistence Agreement.
Drafting Notes: Prepare and include as exhibits to the agreement: (a) images of MCB's current MERIDIAN packaging trade dress (including the wave-device logo and teal-and-white color scheme), and (b) images of Brindoval's current and prohibited MERIDIAN FRESH packaging trade dress (teal-and-white color scheme with wave device), for reference and to provide clear benchmarks for the trade-dress prohibitions.
F. Quality Monitoring
Framework Term: Brindoval must provide MCB with product samples annually and permit one quality inspection per calendar year at Brindoval's facilities.
Analysis:
Quality monitoring is a standard component of trademark coexistence agreements. Its purpose is to protect MCB's brand reputation by ensuring that products sold under a mark containing "MERIDIAN" — which consumers may continue to associate, at some level, with MCB — meet reasonable quality standards and comply with the terms of the Coexistence Agreement. If Brindoval were to sell substandard or defective products under the BRINDOVAL MERIDIAN FRESH mark, the resulting consumer dissatisfaction could reflect negatively on MCB's MERIDIAN brand, even though MCB has no control over Brindoval's products.
However, the quality-monitoring provision must be carefully calibrated to avoid two pitfalls. First, overly intrusive quality-monitoring provisions may be resisted by Brindoval during negotiations and could be viewed as unduly burdensome. Second, and more importantly, aggressive quality-control provisions could be construed as creating a de facto licensor-licensee relationship, which would be inconsistent with the coexistence framework. A coexistence agreement is, by its nature, an agreement between independent parties who own and use their respective marks independently. If the quality-monitoring provision is too granular or gives MCB too much control over Brindoval's products, it may blur this distinction.
The framework term sheet's proposal of one annual inspection and annual product samples represents a reasonable middle ground that provides MCB with meaningful monitoring capability without creating the impression of a license relationship.
Recommendation:
• Require Brindoval to provide representative product samples (one of each active SKU bearing the BRINDOVAL MERIDIAN FRESH mark) to MCB within thirty (30) days of each anniversary of the effective date of the Coexistence Agreement.
• Permit MCB to conduct one (1) on-site inspection per calendar year at any Brindoval facility where BRINDOVAL MERIDIAN FRESH products are manufactured, packaged, stored, or distributed. MCB must provide not less than fifteen (15) business days' advance written notice before conducting any inspection. Inspections shall be conducted during normal business hours and shall not unreasonably interfere with Brindoval's operations.
• Define the scope of the inspection to include verification of: (a) compliance with the mark-modification requirements (type-size, font weight, unitary-mark format); (b) compliance with the trade-dress requirements (no teal-and-white color scheme, no wave device); (c) compliance with the channel restrictions (no evidence of distribution to Prohibited Channels); and (d) general product quality (confirmation that products are free from material defects and are consistent with the product samples previously provided).
• MCB must keep all inspection findings, including any proprietary information observed during inspections, strictly confidential, except as necessary to enforce the Coexistence Agreement. Inspection findings may not be disclosed to third parties, including MCB's competitors, suppliers, or customers.
• If MCB identifies a material deficiency during an inspection, MCB shall provide Brindoval with written notice specifying the deficiency and providing Brindoval with thirty (30) days to cure the deficiency. Persistent uncured deficiencies may constitute a material breach of the Coexistence Agreement.
Drafting Notes: Include express language distinguishing the quality-monitoring provision from a trademark license quality-control clause. The agreement should state that the quality-monitoring provision is intended solely to protect the goodwill associated with MCB's MERIDIAN marks and does not create a licensor-licensee relationship, an agency relationship, or any other supervisory relationship between the parties. Each party is solely responsible for the quality of its own products.
G. Non-Challenge Covenant
Framework Term: Brindoval covenants not to challenge the validity of MCB's U.S. Reg. Nos. 4,218,506 (MERIDIAN), 5,034,771 (MERIDIAN CLEAN), and 5,589,320 (MERIDIAN stylized logo with wave device).
Analysis:
The non-challenge covenant is one of the most important protective terms in the Coexistence Agreement. It prevents Brindoval from subsequently filing cancellation proceedings at the TTAB, or from asserting invalidity, genericness, abandonment, or other affirmative defenses in any future dispute, with respect to MCB's three trademark registrations. Without this covenant, Brindoval could, in theory, accept the settlement and then turn around and attack the validity of MCB's registrations — the very registrations that give MCB the leverage to enforce the coexistence restrictions.
Non-challenge covenants in trademark settlement and coexistence agreements are generally enforceable under federal and New York law. Courts routinely uphold such covenants on the theory that a party who has voluntarily entered into a settlement agreement should not be permitted to renege on the bargain by attacking the validity of the marks that formed the basis of the settlement. There are, however, recognized limits: a party cannot contractually waive the right to challenge a mark that has become truly generic, because genericness determinations implicate the public interest. In practice, this theoretical limitation rarely comes into play, and MCB's MERIDIAN marks are distinctive coined terms that are not at risk of genericness.
The scope of the covenant should extend beyond direct challenges by Brindoval to encompass indirect challenges as well. Brindoval should be prohibited not only from filing its own cancellation or invalidity proceedings, but also from voluntarily assisting, funding, encouraging, or providing evidence to any third party that challenges the validity of MCB's registrations. This prevents Brindoval from doing through a surrogate what it has agreed not to do directly.
Brindoval's pending counterclaim for declaratory judgment of non-infringement in the S.D.N.Y. action will be dismissed with prejudice as part of the settlement. The non-challenge covenant reinforces this dismissal by preventing Brindoval from raising similar challenges in any future proceeding.
Recommendation:
• Draft a broad non-challenge covenant covering all three of MCB's registrations (U.S. Reg. Nos. 4,218,506, 5,034,771, and 5,589,320), including any subsequent registrations that are continuations, divisions, or extensions of these registrations.
• Include a prohibition on Brindoval directly or indirectly challenging, opposing, petitioning to cancel, or seeking to invalidate MCB's registrations, or asserting in any legal proceeding that MCB's marks are invalid, generic, descriptive, abandoned, or otherwise unenforceable.
• Include a prohibition on Brindoval voluntarily assisting, funding, encouraging, or providing evidence or information to any third party for the purpose of challenging the validity or enforceability of MCB's registrations.
• The non-challenge covenant should survive termination of the Coexistence Agreement for any reason.
• Include a narrow carve-out only for compulsory legal process — i.e., Brindoval shall not be required to violate a lawful subpoena or court order requiring the production of documents or testimony in a proceeding involving MCB's marks, but Brindoval may not voluntarily initiate, participate in, or cooperate with any such challenge.
Drafting Notes: Use standard non-challenge covenant language. The covenant should be mutual to the extent that MCB likewise agrees not to challenge Brindoval's registration of BRINDOVAL MERIDIAN FRESH once the amended application (Serial No. 97/412,558) proceeds to registration, provided the registration conforms to the terms of the Coexistence Agreement.
H. Amendment of Brindoval's Pending Trademark Application
Framework Term: Brindoval must amend its 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.
Analysis:
The amendment of Brindoval's pending trademark application is a necessary corollary to the mark-modification and product-category restrictions set forth in the Coexistence Agreement. Without the amendment, Brindoval's pending application would continue to seek registration for "MERIDIAN FRESH" in its original form and with an unrestricted description of goods — an outcome inconsistent with the settlement. The amended application should align precisely with the terms of the Coexistence Agreement, both with respect to the modified mark ("BRINDOVAL MERIDIAN FRESH") and the narrowed description of goods (limited to the Permitted Products sold through Authorized Channels).
MCB's pending TTAB opposition (Opposition No. 91/278,415) will be withdrawn with Brindoval's consent, but the withdrawal should be contingent upon Brindoval's filing of the conforming amendment. This sequencing is critical: if MCB withdraws the opposition before Brindoval files the amendment, MCB loses its ability to block the original "MERIDIAN FRESH" application from proceeding to registration. The withdrawal should not be filed until Brindoval has filed the amendment and MCB has confirmed that the amendment conforms to the agreed terms.
Timing is also important. Brindoval should be required to file the amendment within a specified period after execution of the Coexistence Agreement — we recommend 30 days — and to provide MCB with a copy of the filed amendment and all subsequent USPTO correspondence regarding the application. MCB should have the contractual right to reinstate opposition proceedings (or file a new opposition) if Brindoval fails to file the amendment within the agreed timeframe or if the amendment does not conform to the agreed terms.
Recommendation:
• Require Brindoval to file the amendment to Serial No. 97/412,558 with the USPTO within thirty (30) days of execution of the Coexistence Agreement. The amendment must modify the mark from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" and amend the description of goods.
• The amended description of goods should read: "Household cleaning preparations, namely, all-purpose cleaning sprays, glass cleaners, disinfecting wipes, disinfecting sprays, and dish soap, sold exclusively through retail stores and electronic commerce websites owned and operated by Brindoval Home Goods Inc."
• Brindoval must provide MCB with a copy of the filed amendment within five (5) business days of filing, and must provide MCB with copies of all subsequent USPTO correspondence regarding the application (including Office Actions, Examiner's Amendments, and Notices of Allowance) within ten (10) business days of receipt.
• MCB's withdrawal of Opposition No. 91/278,415 is contingent upon and shall not be filed until (a) Brindoval has filed the conforming amendment, and (b) MCB has reviewed the filed amendment and confirmed in writing that it conforms to the terms of the Coexistence Agreement.
• If Brindoval fails to file the conforming amendment within 30 days, or if the filed amendment does not conform to the agreed terms and Brindoval fails to cure within fifteen (15) business days after receiving MCB's written notice of non-conformity, MCB shall have the right to continue prosecuting the TTAB opposition and to pursue all available legal remedies.
Drafting Notes: Coordinate the timing of the withdrawal of the TTAB opposition with the filing of the Joint Stipulation of Dismissal in S.D.N.Y. The two proceedings should be resolved in tandem to avoid any gap in MCB's ability to challenge Brindoval's use of the mark. The stipulated dismissal in S.D.N.Y. and the TTAB withdrawal should both be filed within one week of each other, with the TTAB withdrawal filed only after confirmation that the conforming amendment has been filed.
I. Liquidated Damages
Framework Term: Breach of channel or product-category restrictions triggers liquidated damages of $500,000 per occurrence plus actual damages.
Analysis:
The liquidated-damages provision is a key enforcement mechanism in the Coexistence Agreement. Its purpose is twofold: (1) to provide MCB with a predetermined, readily enforceable remedy for the most consequential types of breach — violations of the channel and product-category restrictions — without the burden of proving actual damages in each instance; and (2) to serve as a powerful deterrent against Brindoval's violation of these restrictions, which would be the most harmful categories of breach from MCB's perspective.
Liquidated-damages provisions are enforceable under New York law provided two conditions are met: (a) the amount bears a reasonable relationship to the probable loss, and (b) actual damages would be difficult to calculate at the time of contracting. See N.Y. UCC § 2-718; Northpoint Holdings v. Purdy Corp., 41 N.Y.2d 354, 365 (1977). Both conditions are satisfied here.
With respect to the first condition, the brand harm to MCB from Brindoval's distribution of BRINDOVAL MERIDIAN FRESH products through unauthorized channels or in prohibited product categories would be substantial. MCB's MERIDIAN cleaning line generates approximately $94.5 million in annual revenue. Unauthorized expansion by Brindoval — whether into third-party retail channels where MCB products are also sold, or into product categories (such as personal care or home fragrance) where MCB has established brand presence — could dilute the MERIDIAN brand, confuse consumers, and divert sales. A $500,000 per-occurrence amount is a fraction of the potential annual revenue impact and is reasonable in light of the stakes.
With respect to the second condition, the actual damages from a particular breach of the channel or product-category restrictions would be difficult to quantify precisely. The harm to MCB would include not only lost sales but also brand dilution, loss of consumer goodwill, and long-term reputational damage — intangible harms that are notoriously difficult to prove and calculate. A pre-set liquidated amount addresses this difficulty.
However, the definition of "occurrence" requires careful attention. Without a clear definition, disputes will arise over whether each individual sale constitutes a separate occurrence (which would result in potentially astronomical damages), or whether a broader unit of measurement applies. We recommend defining "occurrence" on a per-SKU, per-channel basis — i.e., each distinct combination of a specific product SKU and a specific Prohibited Channel constitutes a separate occurrence. For example, if Brindoval sells all-purpose cleaning spray on Amazon and glass cleaner on Walmart.com, that would constitute two occurrences ($1,000,000 in aggregate liquidated damages). This approach provides meaningful deterrence without being susceptible to an argument that the provision is a penalty.
The "plus actual damages" language in the framework term sheet is important: it ensures that MCB can recover beyond the liquidated amount if provable damages exceed $500,000 per occurrence. This is permissible under New York law where the agreement clearly provides that liquidated damages are a floor, not a ceiling, and that actual damages may be recovered to the extent they exceed the liquidated amount.
Recommendation:
• Set liquidated damages at $500,000 per occurrence as stated in the framework term sheet.
• Define "occurrence" as each instance of sale or distribution of a specific BRINDOVAL MERIDIAN FRESH SKU through a Prohibited Channel or in a Prohibited Product Category. Each distinct SKU/channel or SKU/product-category combination constitutes a separate occurrence.
• Include a provision that liquidated damages are cumulative with — not in lieu of — injunctive relief and actual damages. MCB may seek injunctive relief to enjoin the breach and may recover actual damages to the extent actual damages exceed the liquidated amount for any given occurrence.
• Place the liquidated-damages provision in §9.2 of the agreement for organizational clarity.
• Include an acknowledgment by both parties that the liquidated-damages amount is a reasonable estimate of anticipated harm arising from breach of the channel and product-category restrictions, that actual damages from such breaches would be difficult to calculate, and that the liquidated-damages provision does not constitute a penalty.
• Anticipate Brindoval's likely pushback on this provision. Brindoval may seek (a) a lower per-occurrence amount, (b) an aggregate cap on liquidated damages, or (c) a cure period before liquidated damages begin to accrue. We recommend resisting any reduction in the per-occurrence amount and any aggregate cap, as these would undermine the deterrent effect of the provision. However, we recommend accepting a reasonable cure period of thirty (30) days — i.e., MCB must provide written notice of the breach and Brindoval will have 30 days to cure before liquidated damages begin to accrue — with an express exception for willful breaches, which should trigger liquidated damages immediately upon the breach without any cure period.
Drafting Notes: The cure-period exception for willful breaches should define "willful" as a breach that Brindoval knew or should have known constituted a violation of the channel or product-category restrictions at the time of the breach. This would include, for example, an affirmative decision to list BRINDOVAL MERIDIAN FRESH products on Amazon, which could not plausibly be inadvertent.
J. Term and Termination
Framework Term: Perpetual, unless terminated by mutual written consent or material breach.
Analysis:
A perpetual term is standard and appropriate for a trademark coexistence agreement. The parties' respective trademark rights are ongoing in nature — MCB's registrations do not expire (assuming proper maintenance), and Brindoval's use of the BRINDOVAL MERIDIAN FRESH mark will continue indefinitely. The coexistence restrictions must therefore endure for as long as Brindoval uses any mark incorporating "MERIDIAN." A fixed term would create the anomalous result of the restrictions expiring after a period of years, potentially allowing Brindoval to revert to "MERIDIAN FRESH" or expand into prohibited channels and product categories.
The framework term sheet identifies two termination triggers: mutual written consent and material breach. Both are appropriate. However, the material-breach termination provision requires careful drafting to ensure that MCB has clear remedies in the event of a breach while also providing Brindoval with reasonable procedural protections.
For non-willful material breaches, a notice-and-cure period is appropriate — we recommend 60 days. This period gives Brindoval a meaningful opportunity to remedy a breach before MCB can terminate the agreement and pursue litigation. However, certain breaches (such as willful violations of the channel or product-category restrictions) should not be subject to a cure period, because the harm to MCB from such breaches is immediate and ongoing.
Upon termination for Brindoval's material breach, MCB should have the right to pursue all available legal remedies, including claims under the Lanham Act, New York GBL § 360-l, and any other applicable statute, without regard to the settlement payment previously made or the dismissal of the prior action. In effect, termination for breach should restore MCB to its pre-settlement position with respect to legal remedies, while allowing MCB to retain the settlement payment.
A survival clause is essential. Certain provisions must survive termination to ensure continued enforceability of the most critical protections:
• The non-challenge covenant (Part III.G) should survive termination in perpetuity, regardless of the reason for termination.
• The confidentiality provisions should survive termination.
• The liquidated-damages provision should survive termination with respect to any pre-termination breaches (i.e., MCB should be able to recover liquidated damages for breaches that occurred before termination, even if the enforcement action is commenced after termination).
• The settlement-payment obligation should survive termination — if the Coexistence Agreement is terminated for Brindoval's breach before the settlement payment has been released from escrow, the settlement payment should still be released to MCB.
Additionally, if Brindoval voluntarily ceases all use of the BRINDOVAL MERIDIAN FRESH mark, the Coexistence Agreement should remain in effect. This prevents Brindoval from ceasing use for a period of time, allowing the agreement to lapse, and then resuming infringing use of "MERIDIAN FRESH" (without the "BRINDOVAL" prefix) in the future.
Recommendation:
• Perpetual term, with termination only upon: (a) mutual written consent of both parties, or (b) material uncured breach, with a sixty (60)-day notice and cure period for non-willful material breaches. Willful material breaches (defined to include intentional violations of the channel restrictions, product-category restrictions, or trade-dress requirements) are not subject to a cure period and entitle MCB to terminate immediately upon written notice.
• Upon termination for Brindoval's material breach, MCB may pursue any and all available legal remedies, including claims under 15 U.S.C. §§ 1114(1) and 1125(a), N.Y. GBL § 360-l, and any other applicable federal, state, or common-law claims, without regard to the settlement payment previously made or the prior dismissal of the S.D.N.Y. action.
• Survival clause: The following provisions shall survive termination of the Coexistence Agreement: (i) the non-challenge covenant (in perpetuity); (ii) the confidentiality provisions; (iii) the liquidated-damages provision (with respect to pre-termination breaches); (iv) the settlement-payment obligation; and (v) the governing-law and dispute-resolution provisions.
• The Coexistence Agreement shall remain in full force and effect notwithstanding Brindoval's voluntary cessation of use of the BRINDOVAL MERIDIAN FRESH mark.
Drafting Notes: Address the interaction between the perpetual term and the dismissal with prejudice in S.D.N.Y. The proposed Order of Dismissal should include a provision expressly providing that the Court retains jurisdiction to enforce the Coexistence Agreement. This is important because, once the case is dismissed with prejudice, MCB would ordinarily need to file a new action to enforce the agreement. Retention of jurisdiction allows MCB to enforce the agreement through a motion in the existing case, which is more efficient and provides the benefit of continuity before a judge already familiar with the dispute.
K. Governing Law and Dispute Resolution
Framework Term: New York governing law.
Analysis:
New

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