1011-00003 · Waypoint Capital Partners · Analysis

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PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT

MEMORANDUM

TO: Alan Ngo, Responsible Partner, intellectual Property Marcus Delgado, Billing Partner, intellectual Property

FROM: Christy Bauer, Lead Associate, intellectual Property

DATE: April 18, 2023

RE: Meridian Consumer Brands LLC v. Brindoval Home Goods Inc. — Final Open Issues in Trademark Coexistence Agreement Negotiation

MATTER NO.: 1011-00003

BILLING CODE: 11470-001

CASE REF.: 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 identify the three remaining open issues in the Trademark Coexistence Agreement negotiation between our client, Meridian Consumer Brands LLC ("MCB"), and Brindoval Home Goods Inc. ("Brindoval"), and to recommend MCB's positions and fallback compromises on each issue for discussion by the deal team before we transmit a revised draft to opposing counsel.

By way of context, substantive negotiations between Calderwood & Harkness LLP and Halverson McKay & Pruitt LLP commenced on March 6, 2023, following the court-ordered mediation held on February 15, 2023, before retired Judge Harold K. Novotny of Novotny ADR Services LLC. The mediation produced a framework term sheet that has served as the basis for the definitive Coexistence Agreement currently being negotiated. Multiple rounds of drafts and mark-ups have been exchanged between the parties over the past six weeks, and the parties have reached agreement on all material terms except the three issues discussed in this memorandum.

For reference, the substantive terms already agreed upon by the parties are as follows:

• Settlement Payment. A one-time lump-sum settlement payment of $1,350,000 from Brindoval to MCB.

• Mark Modification. Modification of Brindoval's use of the mark from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH," with "BRINDOVAL" appearing in no less than 75% of the type size of "MERIDIAN FRESH" per draft Section 3.1(b) of the Coexistence Agreement.

• Channel Restrictions. Brindoval's use of the modified mark is limited to Brindoval-branded retail store locations and Brindoval's own e-commerce platform (www.crestviewhomegoods.com), with an express prohibition on use in connection with third-party marketplace platforms (including, without limitation, Amazon, Walmart.com, and Adriatic Corporation) and wholesale distribution to third-party retailers.

• Product-Category Restrictions. Brindoval's use of the modified mark is restricted to International Class 3 household cleaning products only, with no expansion into personal care products, home fragrance products, or laundry detergent.

• Trade-Dress discontinuation. Permanent discontinuation by Brindoval of the teal-and-white color scheme and the wave device associated with the "MERIDIAN FRESH" branding.

• Trade-Dress Review. A 30-day notice and review period during which MCB may review any proposed new trade dress before Brindoval's commercial use.

• Quality Control. Annual product samples to be provided by Brindoval to MCB, with MCB entitled to one quality inspection per calendar year at a mutually convenient time.

• Non-Challenge Covenant. Brindoval's covenant not to challenge MCB's U.S. Registration Nos. 4,218,506, 5,034,771, and 5,589,320.

• Liquidated Damages. Liquidated damages of $500,000 per occurrence of a material breach, as set forth in draft Section 9.2 of the Coexistence Agreement.

• Governing Law; Term. New York governing law; perpetual term.

The three remaining open issues that require resolution are:

(1) Escrow Mechanics and Release Trigger — the conditions under which the $1,350,000 settlement payment held in escrow shall be released to MCB;

(2) Scope of Brindoval's Amendment to Pending Trademark Application Serial No. 97/412,558 — specifically, whether the identification of goods must include channel-of-trade limitations and the contingency procedure if the USPTO refuses the mark amendment; and

(3) Commencement Date for the 120-Day Rebranding Deadline — whether the 120-day period runs from execution of the Coexistence Agreement or from entry of the Court's Order of Dismissal with Prejudice.

It should be noted that Gregory T. Halverson, lead partner at Halverson McKay & Pruitt LLP, together with his team (Megan Janssen and David Kowalski), has signaled in recent correspondence a strong desire to close negotiations by the end of April 2023. We share the view that expeditious resolution of these issues is advisable, both to capture the momentum of the current negotiations and to avoid the costs of continued discovery and motion practice in the underlying litigation, which remains pending. Accordingly, I recommend we schedule a call at the earliest opportunity to align on MCB's positions so that we can transmit a revised draft to Halverson McKay & Pruitt by approximately April 24, 2023.

II. Background and Procedural Posture

A brief recitation of the relevant background and procedural posture is provided below for context.

MCB opened this matter on September 26, 2022, when it transmitted a cease-and-desist letter to Brindoval demanding that Brindoval immediately cease all use of the mark "MERIDIAN FRESH" in connection with household cleaning products. The letter identified MCB's longstanding federal trademark registrations for the MERIDIAN family of marks — including U.S. Registration Nos. 4,218,506 (MERIDIAN, registered September 4, 2012), 5,034,771 (MERIDIAN CLEAN, registered September 13, 2016), and 5,589,320 (MERIDIAN FRESH, registered October 2, 2018) — and asserted that Brindoval's use of the "MERIDIAN FRESH" mark and confusingly similar trade dress constituted trademark infringement, unfair competition, and trademark dilution.

Brindoval's counsel, Halverson McKay & Pruitt LLP, responded by letter dated October 10, 2022, denying infringement and asserting that the "MERIDIAN FRESH" mark as used by Brindoval created no likelihood of confusion with MCB's marks due to purported differences in trade channels, geographic markets, and the overall commercial impression of the respective marks.

On October 14, 2022, MCB filed a Notice of Opposition at the Trademark Trial and Appeal Board ("TTAB"), Opposition No. 91/278,415, against Brindoval's pending trademark application Serial No. 97/412,558 for MERIDIAN FRESH in International Class 3, which had been filed by Brindoval on May 12, 2022, and published for opposition on September 6, 2022. The opposition asserts priority and likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).

MCB subsequently filed its Complaint in the United States District Court for the Southern District of New York on November 7, 2022, initiating Civil Action No. 1:22-cv-09483 before the Honorable Patricia M. Albright. The Complaint asserts claims for: (1) federal trademark infringement under 15 U.S.C. § 1114(1); (2) federal unfair competition, false designation of origin, and false advertising under 15 U.S.C. § 1125(a); and (3) injury to business reputation and dilution under New York General Business Law § 360-l. MCB sought injunctive relief, damages, disgorgement of profits, and attorneys' fees.

On January 9, 2023, the Court granted in part MCB's motion for a preliminary injunction. In a detailed opinion, Judge Albright found that MCB had demonstrated a likelihood of success on its trade-dress infringement claims and ordered Brindoval to modify its trade dress — specifically, to remove the wave device and change the teal-and-white color scheme — within 45 days. However, the Court declined to enjoin Brindoval's use of the word mark "MERIDIAN FRESH" pending trial, finding that the balance of hardships and the public interest weighed against such relief at the preliminary injunction stage, particularly given the significant rebranding costs that would be imposed on Brindoval and the parties' operation in partially overlapping but not identical geographic markets.

Initial disclosures under Federal Rule of Civil Procedure 26(a)(1) were exchanged on January 23, 2023. MCB served its first set of interrogatories and document requests on Brindoval on January 30, 2023. Discovery remains ongoing.

On February 15, 2023, the parties participated in court-ordered mediation before retired Judge Harold K. Novotny of Novotny ADR Services LLC. The mediation session, which lasted approximately nine hours, resulted in a framework term sheet setting forth the principal terms of a proposed settlement and coexistence arrangement. The term sheet, while non-binding, formed the basis for the definitive Coexistence Agreement that has been under negotiation since March 6, 2023.

Since that date, Calderwood & Harkness and Halverson McKay & Pruitt have exchanged multiple rounds of drafts and mark-ups of the proposed Coexistence Agreement. The parties have made substantial progress and, as noted above, have reached agreement on all material terms other than the three issues identified in this memorandum.

The simultaneous litigation in the Southern District of New York remains pending. Pursuant to the framework term sheet, a Joint Stipulation of Dismissal with Prejudice is to be filed by the parties promptly upon execution of the Coexistence Agreement and the related closing documents. The TTAB opposition (Opposition No. 91/278,415) is likewise to be withdrawn upon execution and consummation of the settlement.

III. Open Issue No. 1: Escrow Mechanics and Release Trigger

A. Description of the Issue

The parties have agreed that the $1,350,000 one-time lump-sum settlement payment will be made by Brindoval to MCB and that the funds will be held in escrow pending satisfaction of specified release conditions. Both parties have agreed to use Dralvecen National Bank as escrow agent, with Patricia Dolan, Escrow Officer (located at 60 East 42nd Street, New York, NY 10165), serving as the designated point of contact. The escrow arrangements will be documented in a separate Escrow Agreement to be executed simultaneously with the Coexistence Agreement.

Under the current draft of the Coexistence Agreement, Brindoval is required to deposit $1,350,000 into the designated escrow account at Dralvecen National Bank within ten (10) business days of execution of the Coexistence Agreement. This deposit obligation is not in dispute.

The dispute concerns the conditions that must be satisfied before the escrowed funds are released to MCB — i.e., the "release trigger." The parties' respective positions are as follows:

MCB's Position. MCB has taken the position that the escrowed funds should be released to MCB upon entry by the Court of the Order of Dismissal with Prejudice in Case No. 1:22-cv-09483. Under this formulation, the filing and entry of the dismissal order constitutes the sole release condition, and the escrow agent would release the funds upon receipt of a copy of the filed-stamped Order of Dismissal together with written release instructions from Calderwood & Harkness LLP.

Brindoval's Position. In correspondence dated April 10, 2023, Halverson McKay & Pruitt communicated Brindoval's position that the escrowed funds should be released only upon the satisfaction of both of the following conditions: (a) entry of the Court's Order of Dismissal with Prejudice in Case No. 1:22-cv-09483, and (b) MCB's withdrawal of the TTAB opposition (Opposition No. 91/278,415). Brindoval's counsel has characterized both conditions as necessary to ensure that the dispute is fully and finally resolved before the settlement funds change hands.

The practical impact of this disagreement is that, under Brindoval's formulation, any delay in the processing of the TTAB withdrawal — even if the withdrawal has been filed — could delay the release of funds to MCB. The TTAB's processing timelines can be unpredictable, and a dual-trigger release condition introduces a risk that funds remain in escrow for an extended period due to administrative delays beyond either party's control.

B. MCB's Recommended Position

MCB should maintain that the release trigger should be the entry of the Court's Order of Dismissal with Prejudice, as that event constitutes the single most significant milestone marking the formal conclusion of the dispute between the parties.

The rationale for this position rests on several considerations. First, the withdrawal of the TTAB opposition is, in substance, a ministerial step that follows directly from the execution of the Coexistence Agreement. The draft Agreement already contains a covenant obligation requiring MCB to file a withdrawal of the TTAB opposition within a specified period following execution. Making withdrawal of the opposition a condition to escrow release — rather than simply a covenant obligation — elevates a procedural step to the level of a substantive precondition and introduces the risk that delays in TTAB processing (over which MCB has no control) could create a hold-up on fund release. TTAB docket management is notoriously variable, and administrative processing of a withdrawal of opposition can take anywhere from several days to several weeks depending on TTAB workload.

Second, the Court's Order of Dismissal with Prejudice is, as a matter of both law and practice, the definitive event that terminates the parties' dispute. Once the dismissal order is entered, the federal court action is concluded and cannot be refiled. The TTAB opposition, by contrast, is ancillary to the court action and would in any event become moot upon execution of the Coexistence Agreement, under which Brindoval is required to amend its pending application.

Third, MCB should not be subject to a delay in receiving the settlement funds to which it is contractually entitled based on the processing timelines of a third-party administrative tribunal.

To address Brindoval's legitimate interest in ensuring that the TTAB opposition is in fact withdrawn, MCB should offer to file the withdrawal of the TTAB opposition simultaneously with — or, if Brindoval prefers, prior to — the filing of the Joint Stipulation of Dismissal. This sequencing would ensure that Brindoval has confirmation that the TTAB withdrawal has been filed before the dismissal order triggers the release of funds. This approach satisfies Brindoval's substantive concern without introducing the complications of a dual-trigger release mechanism.

C. Recommended Fallback Compromise

If Brindoval insists on a dual-trigger release condition and this issue threatens to derail the broader negotiation, MCB should accept a release trigger conditioned on the satisfaction of both (a) entry of the Court's Order of Dismissal with Prejudice and (b) the filing (not acceptance, processing, or entry of an order) of the withdrawal of the TTAB opposition. Under this formulation, MCB's filing of the withdrawal papers with the TTAB satisfies the condition, regardless of how long it takes the TTAB to process and formally accept the withdrawal.

To eliminate ambiguity, the fallback provision should include an express statement that if TTAB processing of the withdrawal takes longer than ten (10) business days after filing, the filing itself shall be deemed to satisfy the condition for purposes of escrow release. This ensures that MCB is not penalized for TTAB administrative delays.

Under either the primary or fallback position, the escrow agreement should include a provision specifying that Calderwood & Harkness LLP will provide written release instructions to Dralvecen National Bank, accompanied by (i) a file-stamped copy of the Court's Order of Dismissal with Prejudice and (ii) proof of filing of the withdrawal of the TTAB opposition (e.g., a copy of the filed withdrawal papers together with the TTAB electronic filing receipt). Upon receipt of these documents and written release instructions, the escrow agent would be authorized and directed to release the funds to MCB.

Additionally, the escrow agreement should address the contingency in which the Court does not enter the dismissal order within a reasonable period following the filing of the Joint Stipulation of Dismissal. Specifically, if the Court has not entered the dismissal order within thirty (30) days after the Joint Stipulation is filed, and the Coexistence Agreement has been terminated for cause in accordance with its terms, the escrow agreement should provide for the return of the escrowed funds to Brindoval. This provision should be narrowly drafted to apply only in the event of a termination of the Coexistence Agreement and should not create a general right of return.

D. Practical Considerations

Several practical steps should be taken in connection with the resolution of this issue:

First, the timing of the filings should be coordinated carefully. The plan should be to file the Joint Stipulation of Dismissal in the Southern District of New York and the withdrawal of the TTAB opposition on the same business day, to the extent practicable. The withdrawal of the TTAB opposition can be filed electronically through ESTTA, and the Joint Stipulation can be filed through ECF. Coordinating same-day filing will streamline the escrow release process and minimize the window during which one filing has been made but the other has not.

Second, we should confirm with Patricia Dolan at Dralvecen National Bank that the bank's standard escrow agreement form can accommodate the agreed release mechanics, including the dual-document release instruction procedure described above. If the bank's standard form does not accommodate these provisions, we should negotiate appropriate modifications to the escrow agreement before transmitting the final Coexistence Agreement to Halverson McKay & Pruitt.

Third, escrow fees are to be allocated as provided in the separate escrow agreement to be executed simultaneously with the Coexistence Agreement. The current draft contemplates that escrow fees will be shared equally by the parties, and Brindoval has not objected to this allocation. The escrow fees charged by Dralvecen National Bank for a transaction of this size are expected to be modest and should not present a negotiation issue.

IV. Open Issue No. 2: Scope of Brindoval's Amendment to Pending Trademark Application Serial No. 97/412,558

A. Description of the Issue

The draft Coexistence Agreement requires Brindoval to amend its pending trademark application, Serial No. 97/412,558 (filed May 12, 2022, for the standard-character mark MERIDIAN FRESH in International Class 3, published for opposition on September 6, 2022), to reflect the modified mark and a revised identification of goods consistent with the parties' coexistence arrangement. The scope of the required amendment is the subject of the second open issue in the negotiation.

MCB's Position. MCB has taken the position that the amendment should modify both (i) the mark itself, from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH," and (ii) the identification of goods, to read as follows:

"Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting wipes, and dish soap, sold exclusively through applicant's own retail store locations and applicant's own e-commerce platform."

This formulation ensures that the identification of goods in any resulting registration mirrors the channel-of-trade restrictions agreed upon in the Coexistence Agreement. MCB views this as a critical protection, because the identification of goods in a federal registration defines the scope of the registrant's presumptive rights under Section 7(b) of the Lanham Act, 15 U.S.C. § 1057(b). If the registration were to issue without channel limitations, Brindoval could potentially cite the registration as a basis for asserting rights in channels of trade beyond those permitted by the Coexistence Agreement — for example, in connection with future disputes with third parties, or in the event of a change of ownership of Brindoval's business.

Brindoval's Position. In its most recent mark-up of the draft Coexistence Agreement, Halverson McKay & Pruitt agreed that Brindoval will amend the mark to "BRINDOVAL MERIDIAN FRESH" but objected to incorporating channel-of-trade limitations into the identification of goods. Brindoval's counsel has advanced two arguments in support of its position: (a) the USPTO may not accept a channel-of-trade restriction as part of an identification of goods, which could result in an office action and delays in prosecution; and (b) incorporating such a restriction would unduly narrow the scope of any resulting registration in ways that go beyond what is necessary to effectuate the coexistence arrangement, potentially prejudicing Brindoval's ability to enforce its mark against third-party infringers.

Halverson McKay & Pruitt has also raised an additional procedural concern: whether amending the mark from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" constitutes a "material alteration" of the mark that the USPTO would refuse under the prohibition on material alterations set forth in 37 C.F.R. § 2.72 and TMEP § 807.13. Brindoval's counsel has taken the position that the amendment is permissible because it adds matter (the house mark "BRINDOVAL") rather than changing the dominant element of the mark, but has flagged this as a risk to be addressed in the Agreement.

B. MCB's Recommended Position

MCB should insist that the identification of goods in the amended application include the channel-of-trade restriction language set forth above. This is a critical structural protection for MCB and should be treated as a high-priority negotiation point.

The rationale for this position is grounded in both trademark law and practical commercial considerations. As noted, the identification of goods in a federal registration defines the scope of the registrant's rights and the presumptions of use that attach to the registration. A registration for "household cleaning preparations" without channel limitations would create a presumption that the registrant uses the mark in all ordinary channels of trade for such goods — including mass-market retail, wholesale distribution, and third-party e-commerce platforms. This presumption would be directly inconsistent with the channel restrictions agreed upon in the Coexistence Agreement and could create complications in future enforcement actions, priority disputes, or due-diligence reviews in connection with a potential sale of Brindoval's business.

Regarding Brindoval's argument that the USPTO may not accept a channel-of-trade limitation, this concern is not well-founded. The Trademark Manual of Examining Procedure ("TMEP") expressly provides that goods may be limited by channels of trade as part of the identification of goods. TMEP § 1402.03(c) states that an applicant may include a limitation on trade channels in the identification, and the USPTO routinely accepts such limitations. Examples of accepted channel-of-trade limitations include goods "sold exclusively through applicant's retail stores" and goods "sold exclusively through applicant's website." MCB's proposed language is consistent with these accepted formulations and should not present a prosecution obstacle.

The specific proposed identification of goods should read:

Regarding the material-alteration concern, MCB should acknowledge that this is a legitimate procedural question that warrants careful consideration. The addition of a house mark prefix to an existing mark is generally treated as permissible under TMEP § 807.13, which provides that an amendment to a mark that involves the addition of a term that does not materially alter the character of the mark may be accepted. The addition of "BRINDOVAL" as a house mark prefix to "MERIDIAN FRESH" does not change the dominant element of the mark ("MERIDIAN FRESH") and does not alter the overall commercial impression in a way that would likely be deemed a material alteration by the examining attorney. Moreover, there is substantial precedent for the addition of a house mark prefix being permitted as a non-material amendment. See, e.g., In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001) (discussing standard for material alteration); TMEP § 807.13(a) (amendments adding matter to a mark).

However, there is some risk that the examining attorney could take a different view, particularly if the examining attorney concludes that the addition of "BRINDOVAL" changes the overall commercial impression of the mark in a material way. To address this risk, the Coexistence Agreement should include a contingency provision: if the USPTO refuses the amendment as a material alteration and the refusal becomes final (i.e., after any appeal), Brindoval shall be required to abandon application Serial No. 97/412,558 and file a new application for "BRINDOVAL MERIDIAN FRESH" with the agreed identification of goods, at Brindoval's sole expense, within sixty (60) days of the date on which the refusal becomes final. This provision ensures that the objective of the coexistence arrangement — a registration for the modified mark with a conforming identification of goods — is achieved regardless of whether the amendment route or the new-application route is ultimately required.

C. Recommended Fallback Compromise

If Brindoval's counsel continues to resist the inclusion of channel-of-trade limitations in the identification of goods, and if MCB determines that this issue should not be permitted to block the overall settlement, MCB should propose the following two-part compromise:

(1) Mark Amendment. Brindoval amends the mark in application Serial No. 97/412,558 from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH."

(2) Identification of Goods. The identification of goods is amended to read: "Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting wipes, and dish soap." This formulation limits the identification to the specific product types within the parties' coexistence arrangement and removes any argument that Brindoval's registration covers a broader range of International Class 3 goods (e.g., personal care products, home fragrances, or laundry detergent). However, it does not include the channel-of-trade limitation.

(3) Covenant Provision. The Coexistence Agreement includes a separate express covenant in which Brindoval agrees that it will not rely upon the registration, if issued, as a basis for expanding its use of the mark beyond the channels of trade and product categories permitted by the Coexistence Agreement. This covenant should be broadly worded and should apply to Brindoval, its successors, and assigns.

As an additional structural safeguard, the Coexistence Agreement should include an express provision stating that the registration for "BRINDOVAL MERIDIAN FRESH," if issued, does not expand or modify Brindoval's rights or obligations under the Coexistence Agreement, and that in the event of any conflict between the scope of the registration and the terms of the Coexistence Agreement, the Coexistence Agreement controls. This provision should be drafted as a standalone section of the Agreement, and the parties should acknowledge it in the recitals as well, to maximize its visibility and enforceability.

The contingency provision for material-alteration refusal should be included under either the primary or fallback position. Specifically, if the USPTO refuses the mark amendment as a material alteration, Brindoval shall be required to abandon application Serial No. 97/412,558 and file a new application for "BRINDOVAL MERIDIAN FRESH" with the agreed identification of goods, at Brindoval's sole expense, within sixty (60) days of the date on which the refusal becomes final. Brindoval should be required to prosecute the new application diligently and in good faith, and to keep MCB informed of the status of the application.

D. Practical Considerations

Several practical considerations bear on the resolution of this issue:

First, and critically, MCB should consent to the withdrawal of the TTAB opposition (Opposition No. 91/278,415) only upon Brindoval's filing of the amendment to application Serial No. 97/412,558 in the form agreed upon by the parties. This sequencing is essential to protect MCB against a scenario in which the opposition is withdrawn but the agreed amendment to the application is never filed, leaving Brindoval with a pending application for the unmodified "MERIDIAN FRESH" mark and MCB without a procedural mechanism to challenge it. The Coexistence Agreement should include an express provision making the withdrawal of the opposition contingent upon Brindoval's demonstration that the amendment has been filed. Specifically, MCB should not be required to file the withdrawal of the opposition until Brindoval provides Calderwood & Harkness with a copy of the filed amendment to the application, including the TEAS electronic filing receipt.

Second, I have asked Peter Vassiliev to research and confirm current USPTO practice on two specific procedural points: (a) the acceptability of channel-of-trade limitations in identifications of goods, with recent examples of accepted identifications including such limitations; and (b) the material-alteration standard applicable to amendments that add a house mark prefix to an existing word mark, including any recent Examining Attorney decisions or TTAB precedent on this point. Peter's research will support MCB's position in the final round of negotiations and will also inform our assessment of the risk that the USPTO refuses the amendment. I expect his report within the next several business days.

Third, if the parties adopt the fallback compromise (mark amendment without channel limitation, plus covenant), we should consider whether to propose that the covenant be recorded at the USPTO as part of or in connection with the registration, in order to provide constructive notice to third parties. This step is unusual and may not be accepted by Brindoval, but it would enhance the protective value of the covenant.

V. Open Issue No. 3: Commencement Date for 120-Day Rebranding Deadline

A. Description of the Issue

The draft Coexistence Agreement requires Brindoval to complete its rebranding from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" — including the adoption of new trade dress that does not incorporate the teal-and-white color scheme or the wave device — within 120 days. The parties agree on the 120-day duration but disagree on the commencement date of the period.

MCB's Position. MCB has taken the position that the 120-day rebranding period should run from the date of execution of the Coexistence Agreement. By way of illustration, if the Agreement is executed on May 15, 2023 (a realistic target date), the rebranding deadline would fall on September 12, 2023.

Brindoval's Position. Brindoval has taken the position that the 120-day rebranding period should run from the date of entry of the Court's Order of Dismissal with Prejudice in Case No. 1:22-cv-09483. Brindoval's counsel argues that Brindoval should not be required to incur significant rebranding expenses until the litigation is formally resolved and the Court has entered the dismissal order. Brindoval has also noted the practical challenges of selling through existing packaging inventory across its 148 retail store locations in 12 Midwestern and Mountain West states, as well as through its e-commerce platform. Brindoval argues that it would be commercially unreasonable to require it to begin incurring rebranding costs while the litigation technically remains pending.

The practical difference between these two positions depends on how quickly the Court enters the dismissal order after the Joint Stipulation of Dismissal is filed. If the dismissal order is entered within approximately two weeks of execution of the Agreement — a reasonable expectation, given that Joint Stipulations of Dismissal are typically processed promptly — the practical difference between the two positions is modest, on the order of 10 to 14 days. However, if there is any delay in obtaining the dismissal order (for example, due to judicial workload, court holidays, or administrative processing delays), the gap could widen, potentially by several weeks. In a worst-case scenario — although unlikely — a significant delay in the entry of the dismissal order could push Brindoval's rebranding deadline into late 2023 or beyond, with corresponding harm to MCB's brand-protection interests.

B. MCB's Recommended Position

MCB should insist that the 120-day rebranding period commence on the date of execution of the Coexistence Agreement. This is the position that best protects MCB's interests and is well-supported by the circumstances of this case.

The rationale for this position rests on several grounds:

First, the Coexistence Agreement is a binding contract upon execution, regardless of whether the Court's Order of Dismissal has yet been entered. The rebranding obligation is a contractual commitment that arises upon execution and is not contingent upon the subsequent entry of a court order. Tying the commencement of the rebranding period to a judicial act introduces an element of uncertainty that is unnecessary and inappropriate for a commercial obligation that is fully within Brindoval's control.

Second, Brindoval has been on notice of the need to modify its branding since at least January 9, 2023, when the Court granted MCB's motion for a preliminary injunction and ordered Brindoval to modify its trade dress (remove the wave device and change the teal-and-white color scheme) within 45 days. That 45-day deadline expired on approximately February 23, 2023. Brindoval has thus had over three months to begin planning and implementing trade-dress changes. A 120-day rebranding period running from execution of the Coexistence Agreement — i.e., commencing in mid-May 2023 and concluding in mid-September 2023 — provides Brindoval with approximately eight months from the date of the preliminary injunction order to complete its rebranding. This is more than ample time.

Third, running the deadline from execution gives MCB certainty on timing and allows MCB to plan its own marketing and brand-enforcement activities accordingly. MCB's brand management team, led by Rachel Dominguez (VP, Brand Management), has expressed a strong preference for a defined and predictable rebranding timeline.

Fourth, the rebranding obligation is a core commercial commitment of the Coexistence Agreement, not an ancillary procedural step. Brindoval can and should begin planning and implementing its rebranding immediately upon execution of the Agreement, and there is no reason to delay this process pending the entry of a court order that is expected to follow within days or, at most, a few weeks.

Fifth, the $1,350,000 settlement payment is structured, in part, to compensate MCB for the ongoing market confusion during the transition period while Brindoval completes its rebranding. Delayed rebranding extends the period of market confusion and, correspondingly, extends the period during which MCB's brand equity continues to be diluted by Brindoval's use of the unmodified "MERIDIAN FRESH" mark and the confusingly similar trade dress.

MCB should emphasize that 120 days from execution (approximately September 12, 2023, assuming execution on May 15, 2023) provides ample time for Brindoval to complete the rebranding, particularly given that many of the required trade-dress changes — the removal of the wave device and the change from the teal-and-white color scheme — were already required by the Court's preliminary injunction order issued more than three months ago.

C. Recommended Fallback Compromise

If Brindoval insists on tying the rebranding deadline to the entry of the dismissal order and this issue threatens to impede the overall settlement, MCB should propose the following hybrid approach:

Primary Fallback. The 120-day rebranding period runs from the date of execution of the Coexistence Agreement. However, Brindoval receives an automatic fourteen (14)-day extension of the 120-day deadline if the Court has not entered the Order of Dismissal with Prejudice within fourteen (14) days of the filing of the Joint Stipulation of Dismissal. In other words, the rebranding deadline would be the later of (a) 120 days after execution or (b) 120 days after execution plus 14 days, but only if the dismissal order has not been entered within 14 days of the filing of the Joint Stipulation. This hybrid approach addresses Brindoval's concern about incurring costs before the litigation is formally resolved while preserving MCB's core interest in a predictable and reasonably expeditious rebranding timeline.

Under no circumstances should MCB agree to a commencement date later than the date of entry of the dismissal order. The fallback position should cap the total rebranding period at 120 days from execution plus a maximum fourteen (14)-day extension, for an outside date of 134 days from execution, or approximately September 26, 2023, assuming execution on May 15, 2023.

Alternative Compromise. As an alternative fallback, MCB should be prepared to propose a sell-through grace period in lieu of a later commencement date. Under this approach, Brindoval must cease all use of the unmodified "MERIDIAN FRESH" mark and the old trade dress — on all newly manufactured or ordered products, on all digital and print marketing materials, and on all e-commerce listings — within 120 days of execution. However, Brindoval may sell through existing inventory bearing the old packaging for an additional thirty (30) days beyond the 120-day period (i.e., a total of 150 days from execution, or approximately October 12, 2023, assuming execution on May 15, 2023). After the 120-day mark, all newly manufactured or ordered products must bear the compliant "BRINDOVAL MERIDIAN FRESH" packaging and trade dress. This approach recognizes the practical reality that Brindoval has existing inventory distributed across 148 retail locations and allows a limited sell-through period while ensuring that no new non-compliant products enter the marketplace after the primary deadline.

MCB should be willing to accept either of these fallback proposals if necessary to close the deal, but should negotiate for the primary fallback (automatic 14-day extension) in the first instance, reserving the alternative compromise (30-day sell-through period) as a last resort.

D. Practical Considerations

Several practical considerations are relevant to this issue:

The rebranding deadline directly affects MCB's brand-protection interests. Every additional day that unmodified "MERIDIAN FRESH" products remain on shelves at Brindoval's 148 retail locations and on its e-commerce platform creates ongoing consumer confusion and corresponding harm to MCB's brand equity. The magnitude of this harm is supported by the expert survey evidence in the record. Dr. Elaine Furman's consumer confusion survey, conducted in October 2022 by Lakeshore Brand Consulting LLC, found a net confusion rate of 31.4% among the 612 survey respondents (using a Squirt/modified Eveready protocol). This confusion rate is well above the threshold typically deemed probative of likelihood of confusion in the Second Circuit and underscores the urgency of completing the rebranding as expeditiously as possible.

MCB should consider requesting that Brindoval provide MCB with a written rebranding implementation timeline within thirty (30) days of execution of the Coexistence Agreement. This timeline should include, at a minimum: (a) the anticipated date for completion of packaging redesign; (b) the anticipated date for submission of the new trade dress to MCB for the required 30-day review; (c) the anticipated date for commencement of production of new packaging; (d) the anticipated date for rollout of new packaging to Brindoval's 148 retail locations; and (e) the anticipated date for updating e-commerce listings on www.crestviewhomegoods.com. This timeline will provide MCB with visibility into Brindoval's rebranding progress and will serve as a baseline for assessing compliance.

Additionally, it is important to note that the replacement trade dress adopted by Brindoval must be submitted to MCB for review at least thirty (30) days before commercial use, pursuant to the trade-dress review provision already agreed upon by the parties. This 30-day review period must be factored into Brindoval's 120-day implementation schedule. Effectively, this means that Brindoval must have its new trade dress finalized and submitted to MCB for review no later than 90 days after execution (i.e., approximately August 13, 2023, assuming execution on May 15, 2023), in order to allow for the 30-day review period and still meet the 120-day rebranding deadline. MCB should highlight this timing constraint in negotiations to ensure that Brindoval understands the practical implications and begins its packaging redesign process promptly upon execution.

VI. Summary of Recommended Positions and Fallback Compromises

The following table summarizes MCB's recommended positions, Brindoval's positions, and the recommended fallback compromises on each of the three remaining open issues:

VII. Recommended Next Steps

Based on the foregoing analysis, I recommend the following next steps:

1. Internal Strategy Discussion. Schedule a call with Alan Ngo and Marcus Delgado at the earliest opportunity to discuss the recommended positions and fallback compromises set forth in this memorandum before we respond to Halverson McKay & Pruitt LLP. I am available at any time this week or early next week.

2. Revised Draft Preparation. Following the internal strategy discussion, prepare revised draft sections of the Coexistence Agreement addressing the three open issues, for transmission to Halverson McKay & Pruitt LLP by approximately April 24, 2023. The revised draft should reflect MCB's primary positions, with bracketed alternative language reflecting the fallback compromises where appropriate, to facilitate discussion. Given Halverson McKay & Pruitt's expressed desire to close negotiations by the end of April 2023, prompt transmission of the revised draft is advisable.

3. Client Authorization. Coordinate with Thomas R. Hennessy, General Counsel of MCB, to confirm client authorization for the recommended positions and fallback compromises outlined in this memorandum. With respect to the rebranding timeline issue (Open Issue No. 3), it may be advisable to loop in Rachel Dominguez (VP, Brand Management) given the operational implications of the rebranding deadline for MCB's own marketing and brand-management activities. Thomas and Rachel should be consulted in particular on MCB's willingness to accept the alternative compromise (30-day sell-through grace period) if it becomes necessary to close the deal.

4. USPTO Procedural Research. Peter Vassiliev should confirm current USPTO practice on two specific questions: (a) the acceptability of channel-of-trade limitations in identifications of goods under TMEP § 1402.03(c), with recent examples of accepted identifications; and (b) the material-alteration standard applicable to amendments adding a house mark prefix under TMEP § 807.13 and 37 C.F.R. § 2.72, including any recent TTAB decisions or examining attorney actions on this point. Peter should report back with his findings by no later than April 21, 2023, so that the results can be incorporated into our revised draft and cover letter.

5. Escrow Agent Coordination. Contact Patricia Dolan at Dralvecen National Bank (60 East 42nd Street, New York, NY 10165) to confirm that the bank's escrow agreement form can accommodate the release mechanics described in this memorandum (including the dual-document release instruction procedure and the contingency provision for delayed entry of the dismissal order). If the standard form requires modification, we should begin negotiating those modifications now so that the escrow agreement is ready for execution simultaneously with the Coexistence Agreement.

6. Target Dates. Our target timeline for closing is as follows:

• Revised draft to Halverson McKay & Pruitt: on or about April 24, 2023

• Final negotiations and agreement on all terms: by end of April 2023

• Execution of Coexistence Agreement, Escrow Agreement, and related closing documents: by mid-May 2023

• Deposit of settlement funds into escrow: within 10 business days of execution (i.e., by early June 2023)

• Filing of Joint Stipulation of Dismissal and TTAB withdrawal: promptly following execution

• Commencement of 120-day rebranding period: upon execution (per MCB's recommended position)

I will circulate a calendar hold for the internal strategy call. Please let me know if you have any questions or wish to discuss any aspect of this memorandum before the call.

VIII. Privilege and Confidentiality Notice

This memorandum is a privileged and confidential attorney work product prepared by Calderwood & Harkness LLP in connection with the representation of Meridian Consumer Brands LLC in the matter captioned Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., S.D.N.Y. Case No. 1:22-cv-09483 and TTAB Opposition No. 91/278,415 (Matter No. 1011-00003). This memorandum is protected by the attorney-client privilege, the work-product doctrine, and all other applicable privileges and protections.

This memorandum, and the information contained herein, is intended solely for the use of the individuals to whom it is addressed and such other attorneys and staff of Calderwood & Harkness LLP as may be working on this matter. This memorandum shall not be disclosed, distributed, or provided to any third party — including, without limitation, opposing counsel, the client's business partners, or any regulatory or judicial authority — without the express prior written consent of both Meridian Consumer Brands LLC and Calderwood & Harkness LLP.

If you have received this memorandum in error, please notify the sender immediately and destroy all copies.

PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT Calderwood & Harkness LLP	Matter No. 1011-00003	Billing Code 11470-001
Issue	MCB Recommended Position	Brindoval's Position	Recommended Fallback Compromise
1. Escrow Release Trigger	Release upon entry of Court's Order of Dismissal with Prejudice; TTAB withdrawal to be filed simultaneously or prior to filing of Joint Stipulation of Dismissal	Release upon both (a) entry of dismissal order and (b) MCB's withdrawal of TTAB opposition	Accept dual trigger, but second condition satisfied upon filing (not processing or acceptance) of withdrawal of opposition; if TTAB processing exceeds 10 business days after filing, filing itself satisfies condition; Calderwood & Harkness provides written release instructions to Dralvecen National Bank accompanied by filed-stamped Order and proof of TTAB filing
2. Scope of Application Amendment (Ser. No. 97/412,558)	Amend mark to BRINDOVAL MERIDIAN FRESH and include channel-of-trade limitation in identification of goods; if USPTO refuses amendment as material alteration, Brindoval must abandon and refile at own expense within 60 days	Amend mark to BRINDOVAL MERIDIAN FRESH only; no channel limitation in identification of goods	Accept mark amendment without channel limitation, but (a) narrow identification to specified product types, (b) add express covenant that registration does not expand rights beyond those granted by Agreement, (c) provide that Agreement controls in event of conflict with registration, and (d) require abandonment and refiling at Brindoval's expense within 60 days if USPTO refuses mark amendment as material alteration
3. 120-Day Rebranding Deadline	120 days from execution of Agreement (i.e., approximately September 12, 2023, assuming execution on May 15, 2023)	120 days from entry of Court's Order of Dismissal with Prejudice	Primary: 120 days from execution, plus automatic 14-day extension if dismissal order not entered within 14 days of filing Joint Stipulation (maximum 134 days from execution). Alternative: 120-day compliance deadline from execution, plus 30-day sell-through grace period for existing inventory (maximum 150 days from execution; all newly manufactured products must bear compliant packaging after 120-day mark)

PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT
MEMORANDUM
TO: Alan Ngo, Responsible Partner, intellectual Property Marcus Delgado, Billing Partner, intellectual Property
FROM: Christy Bauer, Lead Associate, intellectual Property
DATE: April 18, 2023
RE: Meridian Consumer Brands LLC v. Brindoval Home Goods Inc. — Final Open Issues in Trademark Coexistence Agreement Negotiation
MATTER NO.: 1011-00003
BILLING CODE: 11470-001
CASE REF.: 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 identify the three remaining open issues in the Trademark Coexistence Agreement negotiation between our client, Meridian Consumer Brands LLC ("MCB"), and Brindoval Home Goods Inc. ("Brindoval"), and to recommend MCB's positions and fallback compromises on each issue for discussion by the deal team before we transmit a revised draft to opposing counsel.
By way of context, substantive negotiations between Calderwood & Harkness LLP and Halverson McKay & Pruitt LLP commenced on March 6, 2023, following the court-ordered mediation held on February 15, 2023, before retired Judge Harold K. Novotny of Novotny ADR Services LLC. The mediation produced a framework term sheet that has served as the basis for the definitive Coexistence Agreement currently being negotiated. Multiple rounds of drafts and mark-ups have been exchanged between the parties over the past six weeks, and the parties have reached agreement on all material terms except the three issues discussed in this memorandum.
For reference, the substantive terms already agreed upon by the parties are as follows:
• Settlement Payment. A one-time lump-sum settlement payment of $1,350,000 from Brindoval to MCB.
• Mark Modification. Modification of Brindoval's use of the mark from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH," with "BRINDOVAL" appearing in no less than 75% of the type size of "MERIDIAN FRESH" per draft Section 3.1(b) of the Coexistence Agreement.
• Channel Restrictions. Brindoval's use of the modified mark is limited to Brindoval-branded retail store locations and Brindoval's own e-commerce platform (www.crestviewhomegoods.com), with an express prohibition on use in connection with third-party marketplace platforms (including, without limitation, Amazon, Walmart.com, and Adriatic Corporation) and wholesale distribution to third-party retailers.
• Product-Category Restrictions. Brindoval's use of the modified mark is restricted to International Class 3 household cleaning products only, with no expansion into personal care products, home fragrance products, or laundry detergent.
• Trade-Dress discontinuation. Permanent discontinuation by Brindoval of the teal-and-white color scheme and the wave device associated with the "MERIDIAN FRESH" branding.
• Trade-Dress Review. A 30-day notice and review period during which MCB may review any proposed new trade dress before Brindoval's commercial use.
• Quality Control. Annual product samples to be provided by Brindoval to MCB, with MCB entitled to one quality inspection per calendar year at a mutually convenient time.
• Non-Challenge Covenant. Brindoval's covenant not to challenge MCB's U.S. Registration Nos. 4,218,506, 5,034,771, and 5,589,320.
• Liquidated Damages. Liquidated damages of $500,000 per occurrence of a material breach, as set forth in draft Section 9.2 of the Coexistence Agreement.
• Governing Law; Term. New York governing law; perpetual term.
The three remaining open issues that require resolution are:
(1) Escrow Mechanics and Release Trigger — the conditions under which the $1,350,000 settlement payment held in escrow shall be released to MCB;
(2) Scope of Brindoval's Amendment to Pending Trademark Application Serial No. 97/412,558 — specifically, whether the identification of goods must include channel-of-trade limitations and the contingency procedure if the USPTO refuses the mark amendment; and
(3) Commencement Date for the 120-Day Rebranding Deadline — whether the 120-day period runs from execution of the Coexistence Agreement or from entry of the Court's Order of Dismissal with Prejudice.
It should be noted that Gregory T. Halverson, lead partner at Halverson McKay & Pruitt LLP, together with his team (Megan Janssen and David Kowalski), has signaled in recent correspondence a strong desire to close negotiations by the end of April 2023. We share the view that expeditious resolution of these issues is advisable, both to capture the momentum of the current negotiations and to avoid the costs of continued discovery and motion practice in the underlying litigation, which remains pending. Accordingly, I recommend we schedule a call at the earliest opportunity to align on MCB's positions so that we can transmit a revised draft to Halverson McKay & Pruitt by approximately April 24, 2023.
II. Background and Procedural Posture
A brief recitation of the relevant background and procedural posture is provided below for context.
MCB opened this matter on September 26, 2022, when it transmitted a cease-and-desist letter to Brindoval demanding that Brindoval immediately cease all use of the mark "MERIDIAN FRESH" in connection with household cleaning products. The letter identified MCB's longstanding federal trademark registrations for the MERIDIAN family of marks — including U.S. Registration Nos. 4,218,506 (MERIDIAN, registered September 4, 2012), 5,034,771 (MERIDIAN CLEAN, registered September 13, 2016), and 5,589,320 (MERIDIAN FRESH, registered October 2, 2018) — and asserted that Brindoval's use of the "MERIDIAN FRESH" mark and confusingly similar trade dress constituted trademark infringement, unfair competition, and trademark dilution.
Brindoval's counsel, Halverson McKay & Pruitt LLP, responded by letter dated October 10, 2022, denying infringement and asserting that the "MERIDIAN FRESH" mark as used by Brindoval created no likelihood of confusion with MCB's marks due to purported differences in trade channels, geographic markets, and the overall commercial impression of the respective marks.
On October 14, 2022, MCB filed a Notice of Opposition at the Trademark Trial and Appeal Board ("TTAB"), Opposition No. 91/278,415, against Brindoval's pending trademark application Serial No. 97/412,558 for MERIDIAN FRESH in International Class 3, which had been filed by Brindoval on May 12, 2022, and published for opposition on September 6, 2022. The opposition asserts priority and likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
MCB subsequently filed its Complaint in the United States District Court for the Southern District of New York on November 7, 2022, initiating Civil Action No. 1:22-cv-09483 before the Honorable Patricia M. Albright. The Complaint asserts claims for: (1) federal trademark infringement under 15 U.S.C. § 1114(1); (2) federal unfair competition, false designation of origin, and false advertising under 15 U.S.C. § 1125(a); and (3) injury to business reputation and dilution under New York General Business Law § 360-l. MCB sought injunctive relief, damages, disgorgement of profits, and attorneys' fees.
On January 9, 2023, the Court granted in part MCB's motion for a preliminary injunction. In a detailed opinion, Judge Albright found that MCB had demonstrated a likelihood of success on its trade-dress infringement claims and ordered Brindoval to modify its trade dress — specifically, to remove the wave device and change the teal-and-white color scheme — within 45 days. However, the Court declined to enjoin Brindoval's use of the word mark "MERIDIAN FRESH" pending trial, finding that the balance of hardships and the public interest weighed against such relief at the preliminary injunction stage, particularly given the significant rebranding costs that would be imposed on Brindoval and the parties' operation in partially overlapping but not identical geographic markets.
Initial disclosures under Federal Rule of Civil Procedure 26(a)(1) were exchanged on January 23, 2023. MCB served its first set of interrogatories and document requests on Brindoval on January 30, 2023. Discovery remains ongoing.
On February 15, 2023, the parties participated in court-ordered mediation before retired Judge Harold K. Novotny of Novotny ADR Services LLC. The mediation session, which lasted approximately nine hours, resulted in a framework term sheet setting forth the principal terms of a proposed settlement and coexistence arrangement. The term sheet, while non-binding, formed the basis for the definitive Coexistence Agreement that has been under negotiation since March 6, 2023.
Since that date, Calderwood & Harkness and Halverson McKay & Pruitt have exchanged multiple rounds of drafts and mark-ups of the proposed Coexistence Agreement. The parties have made substantial progress and, as noted above, have reached agreement on all material terms other than the three issues identified in this memorandum.
The simultaneous litigation in the Southern District of New York remains pending. Pursuant to the framework term sheet, a Joint Stipulation of Dismissal with Prejudice is to be filed by the parties promptly upon execution of the Coexistence Agreement and the related closing documents. The TTAB opposition (Opposition No. 91/278,415) is likewise to be withdrawn upon execution and consummation of the settlement.
III. Open Issue No. 1: Escrow Mechanics and Release Trigger
A. Description of the Issue
The parties have agreed that the $1,350,000 one-time lump-sum settlement payment will be made by Brindoval to MCB and that the funds will be held in escrow pending satisfaction of specified release conditions. Both parties have agreed to use Dralvecen National Bank as escrow agent, with Patricia Dolan, Escrow Officer (located at 60 East 42nd Street, New York, NY 10165), serving as the designated point of contact. The escrow arrangements will be documented in a separate Escrow Agreement to be executed simultaneously with the Coexistence Agreement.
Under the current draft of the Coexistence Agreement, Brindoval is required to deposit $1,350,000 into the designated escrow account at Dralvecen National Bank within ten (10) business days of execution of the Coexistence Agreement. This deposit obligation is not in dispute.
The dispute concerns the conditions that must be satisfied before the escrowed funds are released to MCB — i.e., the "release trigger." The parties' respective positions are as follows:
MCB's Position. MCB has taken the position that the escrowed funds should be released to MCB upon entry by the Court of the Order of Dismissal with Prejudice in Case No. 1:22-cv-09483. Under this formulation, the filing and entry of the dismissal order constitutes the sole release condition, and the escrow agent would release the funds upon receipt of a copy of the filed-stamped Order of Dismissal together with written release instructions from Calderwood & Harkness LLP.
Brindoval's Position. In correspondence dated April 10, 2023, Halverson McKay & Pruitt communicated Brindoval's position that the escrowed funds should be released only upon the satisfaction of both of the following conditions: (a) entry of the Court's Order of Dismissal with Prejudice in Case No. 1:22-cv-09483, and (b) MCB's withdrawal of the TTAB opposition (Opposition No. 91/278,415). Brindoval's counsel has characterized both conditions as necessary to ensure that the dispute is fully and finally resolved before the settlement funds change hands.
The practical impact of this disagreement is that, under Brindoval's formulation, any delay in the processing of the TTAB withdrawal — even if the withdrawal has been filed — could delay the release of funds to MCB. The TTAB's processing timelines can be unpredictable, and a dual-trigger release condition introduces a risk that funds remain in escrow for an extended period due to administrative delays beyond either party's control.
B. MCB's Recommended Position
MCB should maintain that the release trigger should be the entry of the Court's Order of Dismissal with Prejudice, as that event constitutes the single most significant milestone marking the formal conclusion of the dispute between the parties.
The rationale for this position rests on several considerations. First, the withdrawal of the TTAB opposition is, in substance, a ministerial step that follows directly from the execution of the Coexistence Agreement. The draft Agreement already contains a covenant obligation requiring MCB to file a withdrawal of the TTAB opposition within a specified period following execution. Making withdrawal of the opposition a condition to escrow release — rather than simply a covenant obligation — elevates a procedural step to the level of a substantive precondition and introduces the risk that delays in TTAB processing (over which MCB has no control) could create a hold-up on fund release. TTAB docket management is notoriously variable, and administrative processing of a withdrawal of opposition can take anywhere from several days to several weeks depending on TTAB workload.
Second, the Court's Order of Dismissal with Prejudice is, as a matter of both law and practice, the definitive event that terminates the parties' dispute. Once the dismissal order is entered, the federal court action is concluded and cannot be refiled. The TTAB opposition, by contrast, is ancillary to the court action and would in any event become moot upon execution of the Coexistence Agreement, under which Brindoval is required to amend its pending application.
Third, MCB should not be subject to a delay in receiving the settlement funds to which it is contractually entitled based on the processing timelines of a third-party administrative tribunal.
To address Brindoval's legitimate interest in ensuring that the TTAB opposition is in fact withdrawn, MCB should offer to file the withdrawal of the TTAB opposition simultaneously with — or, if Brindoval prefers, prior to — the filing of the Joint Stipulation of Dismissal. This sequencing would ensure that Brindoval has confirmation that the TTAB withdrawal has been filed before the dismissal order triggers the release of funds. This approach satisfies Brindoval's substantive concern without introducing the complications of a dual-trigger release mechanism.
C. Recommended Fallback Compromise
If Brindoval insists on a dual-trigger release condition and this issue threatens to derail the broader negotiation, MCB should accept a release trigger conditioned on the satisfaction of both (a) entry of the Court's Order of Dismissal with Prejudice and (b) the filing (not acceptance, processing, or entry of an order) of the withdrawal of the TTAB opposition. Under this formulation, MCB's filing of the withdrawal papers with the TTAB satisfies the condition, regardless of how long it takes the TTAB to process and formally accept the withdrawal.
To eliminate ambiguity, the fallback provision should include an express statement that if TTAB processing of the withdrawal takes longer than ten (10) business days after filing, the filing itself shall be deemed to satisfy the condition for purposes of escrow release. This ensures that MCB is not penalized for TTAB administrative delays.
Under either the primary or fallback position, the escrow agreement should include a provision specifying that Calderwood & Harkness LLP will provide written release instructions to Dralvecen National Bank, accompanied by (i) a file-stamped copy of the Court's Order of Dismissal with Prejudice and (ii) proof of filing of the withdrawal of the TTAB opposition (e.g., a copy of the filed withdrawal papers together with the TTAB electronic filing receipt). Upon receipt of these documents and written release instructions, the escrow agent would be authorized and directed to release the funds to MCB.
Additionally, the escrow agreement should address the contingency in which the Court does not enter the dismissal order within a reasonable period following the filing of the Joint Stipulation of Dismissal. Specifically, if the Court has not entered the dismissal order within thirty (30) days after the Joint Stipulation is filed, and the Coexistence Agreement has been terminated for cause in accordance with its terms, the escrow agreement should provide for the return of the escrowed funds to Brindoval. This provision should be narrowly drafted to apply only in the event of a termination of the Coexistence Agreement and should not create a general right of return.
D. Practical Considerations
Several practical steps should be taken in connection with the resolution of this issue:
First, the timing of the filings should be coordinated carefully. The plan should be to file the Joint Stipulation of Dismissal in the Southern District of New York and the withdrawal of the TTAB opposition on the same business day, to the extent practicable. The withdrawal of the TTAB opposition can be filed electronically through ESTTA, and the Joint Stipulation can be filed through ECF. Coordinating same-day filing will streamline the escrow release process and minimize the window during which one filing has been made but the other has not.
Second, we should confirm with Patricia Dolan at Dralvecen National Bank that the bank's standard escrow agreement form can accommodate the agreed release mechanics, including the dual-document release instruction procedure described above. If the bank's standard form does not accommodate these provisions, we should negotiate appropriate modifications to the escrow agreement before transmitting the final Coexistence Agreement to Halverson McKay & Pruitt.
Third, escrow fees are to be allocated as provided in the separate escrow agreement to be executed simultaneously with the Coexistence Agreement. The current draft contemplates that escrow fees will be shared equally by the parties, and Brindoval has not objected to this allocation. The escrow fees charged by Dralvecen National Bank for a transaction of this size are expected to be modest and should not present a negotiation issue.
IV. Open Issue No. 2: Scope of Brindoval's Amendment to Pending Trademark Application Serial No. 97/412,558
A. Description of the Issue
The draft Coexistence Agreement requires Brindoval to amend its pending trademark application, Serial No. 97/412,558 (filed May 12, 2022, for the standard-character mark MERIDIAN FRESH in International Class 3, published for opposition on September 6, 2022), to reflect the modified mark and a revised identification of goods consistent with the parties' coexistence arrangement. The scope of the required amendment is the subject of the second open issue in the negotiation.
MCB's Position. MCB has taken the position that the amendment should modify both (i) the mark itself, from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH," and (ii) the identification of goods, to read as follows:
"Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting wipes, and dish soap, sold exclusively through applicant's own retail store locations and applicant's own e-commerce platform."
This formulation ensures that the identification of goods in any resulting registration mirrors the channel-of-trade restrictions agreed upon in the Coexistence Agreement. MCB views this as a critical protection, because the identification of goods in a federal registration defines the scope of the registrant's presumptive rights under Section 7(b) of the Lanham Act, 15 U.S.C. § 1057(b). If the registration were to issue without channel limitations, Brindoval could potentially cite the registration as a basis for asserting rights in channels of trade beyond those permitted by the Coexistence Agreement — for example, in connection with future disputes with third parties, or in the event of a change of ownership of Brindoval's business.
Brindoval's Position. In its most recent mark-up of the draft Coexistence Agreement, Halverson McKay & Pruitt agreed that Brindoval will amend the mark to "BRINDOVAL MERIDIAN FRESH" but objected to incorporating channel-of-trade limitations into the identification of goods. Brindoval's counsel has advanced two arguments in support of its position: (a) the USPTO may not accept a channel-of-trade restriction as part of an identification of goods, which could result in an office action and delays in prosecution; and (b) incorporating such a restriction would unduly narrow the scope of any resulting registration in ways that go beyond what is necessary to effectuate the coexistence arrangement, potentially prejudicing Brindoval's ability to enforce its mark against third-party infringers.
Halverson McKay & Pruitt has also raised an additional procedural concern: whether amending the mark from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" constitutes a "material alteration" of the mark that the USPTO would refuse under the prohibition on material alterations set forth in 37 C.F.R. § 2.72 and TMEP § 807.13. Brindoval's counsel has taken the position that the amendment is permissible because it adds matter (the house mark "BRINDOVAL") rather than changing the dominant element of the mark, but has flagged this as a risk to be addressed in the Agreement.
B. MCB's Recommended Position
MCB should insist that the identification of goods in the amended application include the channel-of-trade restriction language set forth above. This is a critical structural protection for MCB and should be treated as a high-priority negotiation point.
The rationale for this position is grounded in both trademark law and practical commercial considerations. As noted, the identification of goods in a federal registration defines the scope of the registrant's rights and the presumptions of use that attach to the registration. A registration for "household cleaning preparations" without channel limitations would create a presumption that the registrant uses the mark in all ordinary channels of trade for such goods — including mass-market retail, wholesale distribution, and third-party e-commerce platforms. This presumption would be directly inconsistent with the channel restrictions agreed upon in the Coexistence Agreement and could create complications in future enforcement actions, priority disputes, or due-diligence reviews in connection with a potential sale of Brindoval's business.
Regarding Brindoval's argument that the USPTO may not accept a channel-of-trade limitation, this concern is not well-founded. The Trademark Manual of Examining Procedure ("TMEP") expressly provides that goods may be limited by channels of trade as part of the identification of goods. TMEP § 1402.03(c) states that an applicant may include a limitation on trade channels in the identification, and the USPTO routinely accepts such limitations. Examples of accepted channel-of-trade limitations include goods "sold exclusively through applicant's retail stores" and goods "sold exclusively through applicant's website." MCB's proposed language is consistent with these accepted formulations and should not present a prosecution obstacle.
The specific proposed identification of goods should read:
"Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting wipes, and dish soap, sold exclusively through applicant's own retail store locations and applicant's own e-commerce platform."
Regarding the material-alteration concern, MCB should acknowledge that this is a legitimate procedural question that warrants careful consideration. The addition of a house mark prefix to an existing mark is generally treated as permissible under TMEP § 807.13, which provides that an amendment to a mark that involves the addition of a term that does not materially alter the character of the mark may be accepted. The addition of "BRINDOVAL" as a house mark prefix to "MERIDIAN FRESH" does not change the dominant element of the mark ("MERIDIAN FRESH") and does not alter the overall commercial impression in a way that would likely be deemed a material alteration by the examining attorney. Moreover, there is substantial precedent for the addition of a house mark prefix being permitted as a non-material amendment. See, e.g., In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001) (discussing standard for material alteration); TMEP § 807.13(a) (amendments adding matter to a mark).
However, there is some risk that the examining attorney could take a different view, particularly if the examining attorney concludes that the addition of "BRINDOVAL" changes the overall commercial impression of the mark in a material way. To address this risk, the Coexistence Agreement should include a contingency provision: if the USPTO refuses the amendment as a material alteration and the refusal becomes final (i.e., after any appeal), Brindoval shall be required to abandon application Serial No. 97/412,558 and file a new application for "BRINDOVAL MERIDIAN FRESH" with the agreed identification of goods, at Brindoval's sole expense, within sixty (60) days of the date on which the refusal becomes final. This provision ensures that the objective of the coexistence arrangement — a registration for the modified mark with a conforming identification of goods — is achieved regardless of whether the amendment route or the new-application route is ultimately required.
C. Recommended Fallback Compromise
If Brindoval's counsel continues to resist the inclusion of channel-of-trade limitations in the identification of goods, and if MCB determines that this issue should not be permitted to block the overall settlement, MCB should propose the following two-part compromise:
(1) Mark Amendment. Brindoval amends the mark in application Serial No. 97/412,558 from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH."
(2) Identification of Goods. The identification of goods is amended to read: "Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting wipes, and dish soap." This formulation limits the identification to the specific product types within the parties' coexistence arrangement and removes any argument that Brindoval's registration covers a broader range of International Class 3 goods (e.g., personal care products, home fragrances, or laundry detergent). However, it does not include the channel-of-trade limitation.
(3) Covenant Provision. The Coexistence Agreement includes a separate express covenant in which Brindoval agrees that it will not rely upon the registration, if issued, as a basis for expanding its use of the mark beyond the channels of trade and product categories permitted by the Coexistence Agreement. This covenant should be broadly worded and should apply to Brindoval, its successors, and assigns.
As an additional structural safeguard, the Coexistence Agreement should include an express provision stating that the registration for "BRINDOVAL MERIDIAN FRESH," if issued, does not expand or modify Brindoval's rights or obligations under the Coexistence Agreement, and that in the event of any conflict between the scope of the registration and the terms of the Coexistence Agreement, the Coexistence Agreement controls. This provision should be drafted as a standalone section of the Agreement, and the parties should acknowledge it in the recitals as well, to maximize its visibility and enforceability.
The contingency provision for material-alteration refusal should be included under either the primary or fallback position. Specifically, if the USPTO refuses the mark amendment as a material alteration, Brindoval shall be required to abandon application Serial No. 97/412,558 and file a new application for "BRINDOVAL MERIDIAN FRESH" with the agreed identification of goods, at Brindoval's sole expense, within sixty (60) days of the date on which the refusal becomes final. Brindoval should be required to prosecute the new application diligently and in good faith, and to keep MCB informed of the status of the application.
D. Practical Considerations
Several practical considerations bear on the resolution of this issue:
First, and critically, MCB should consent to the withdrawal of the TTAB opposition (Opposition No. 91/278,415) only upon Brindoval's filing of the amendment to application Serial No. 97/412,558 in the form agreed upon by the parties. This sequencing is essential to protect MCB against a scenario in which the opposition is withdrawn but the agreed amendment to the application is never filed, leaving Brindoval with a pending application for the unmodified "MERIDIAN FRESH" mark and MCB without a procedural mechanism to challenge it. The Coexistence Agreement should include an express provision making the withdrawal of the opposition contingent upon Brindoval's demonstration that the amendment has been filed. Specifically, MCB should not be required to file the withdrawal of the opposition until Brindoval provides Calderwood & Harkness with a copy of the filed amendment to the application, including the TEAS electronic filing receipt.
Second, I have asked Peter Vassiliev to research and confirm current USPTO practice on two specific procedural points: (a) the acceptability of channel-of-trade limitations in identifications of goods, with recent examples of accepted identifications including such limitations; and (b) the material-alteration standard applicable to amendments that add a house mark prefix to an existing word mark, including any recent Examining Attorney decisions or TTAB precedent on this point. Peter's research will support MCB's position in the final round of negotiations and will also inform our assessment of the risk that the USPTO refuses the amendment. I expect his report within the next several business days.
Third, if the parties adopt the fallback compromise (mark amendment without channel limitation, plus covenant), we should consider whether to propose that the covenant be recorded at the USPTO as part of or in connection with the registration, in order to provide constructive notice to third parties. This step is unusual and may not be accepted by Brindoval, but it would enhance the protective value of the covenant.
V. Open Issue No. 3: Commencement Date for 120-Day Rebranding Deadline
A. Description of the Issue
The draft Coexistence Agreement requires Brindoval to complete its rebranding from "MERIDIAN FRESH" to "BRINDOVAL MERIDIAN FRESH" — including the adoption of new trade dress that does not incorporate the teal-and-white color scheme or the wave device — within 120 days. The parties agree on the 120-day duration but disagree on the commencement date of the period.
MCB's Position. MCB has taken the position that the 120-day rebranding period should run from the date of execution of the Coexistence Agreement. By way of illustration, if the Agreement is executed on May 15, 2023 (a realistic target date), the rebranding deadline would fall on September 12, 2023.
Brindoval's Position. Brindoval has taken the position that the 120-day rebranding period should run from the date of entry of the Court's Order of Dismissal with Prejudice in Case No. 1:22-cv-09483. Brindoval's counsel argues that Brindoval should not be required to incur significant rebranding expenses until the litigation is formally resolved and the Court has entered the dismissal order. Brindoval has also noted the practical challenges of selling through existing packaging inventory across its 148 retail store locations in 12 Midwestern and Mountain West states, as well as through its e-commerce platform. Brindoval argues that it would be commercially unreasonable to require it to begin incurring rebranding costs while the litigation technically remains pending.
The practical difference between these two positions depends on how quickly the Court enters the dismissal order after the Joint Stipulation of Dismissal is filed. If the dismissal order is entered within approximately two weeks of execution of the Agreement — a reasonable expectation, given that Joint Stipulations of Dismissal are typically processed promptly — the practical difference between the two positions is modest, on the order of 10 to 14 days. However, if there is any delay in obtaining the dismissal order (for example, due to judicial workload, court holidays, or administrative processing delays), the gap could widen, potentially by several weeks. In a worst-case scenario — although unlikely — a significant delay in the entry of the dismissal order could push Brindoval's rebranding deadline into late 2023 or beyond, with corresponding harm to MCB's brand-protection interests.
B. MCB's Recommended Position
MCB should insist that the 120-day rebranding period commence on the date of execution of the Coexistence Agreement. This is the position that best protects MCB's interests and is well-supported by the circumstances of this case.
The rationale for this position rests on several grounds:
First, the Coexistence Agreement is a binding contract upon execution, regardless of whether the Court's Order of Dismissal has yet been entered. The rebranding obligation is a contractual commitment that arises upon execution and is not contingent upon the subsequent entry of a court order. Tying the commencement of the rebranding period to a judicial act introduces an element of uncertainty that is unnecessary and inappropriate for a commercial obligation that is fully within Brindoval's control.
Second, Brindoval has been on notice of the need to modify its branding since at least January 9, 2023, when the Court granted MCB's motion for a preliminary injunction and ordered Brindoval to modify its trade dress (remove the wave device and change the teal-and-white color scheme) within 45 days. That 45-day deadline expired on approximately February 23, 2023. Brindoval has thus had over three months to begin planning and implementing trade-dress changes. A 120-day rebranding period running from execution of the Coexistence Agreement — i.e., commencing in mid-May 2023 and concluding in mid-September 2023 — provides Brindoval with approximately eight months from the date of the preliminary injunction order to complete its rebranding. This is more than ample time.
Third, running the deadline from execution gives MCB certainty on timing and allows MCB to plan its own marketing and brand-enforcement activities accordingly. MCB's brand management team, led by Rachel Dominguez (VP, Brand Management), has expressed a strong preference for a defined and predictable rebranding timeline.
Fourth, the rebranding obligation is a core commercial commitment of the Coexistence Agreement, not an ancillary procedural step. Brindoval can and should begin planning and implementing its rebranding immediately upon execution of the Agreement, and there is no reason to delay this process pending the entry of a court order that is expected to follow within days or, at most, a few weeks.
Fifth, the $1,350,000 settlement payment is structured, in part, to compensate MCB for the ongoing market confusion during the transition period while Brindoval completes its rebranding. Delayed rebranding extends the period of market confusion and, correspondingly, extends the period during which MCB's brand equity continues to be diluted by Brindoval's use of the unmodified "MERIDIAN FRESH" mark and the confusingly similar trade dress.
MCB should emphasize that 120 days from execution (approximately September 12, 2023, assuming execution on May 15, 2023) provides ample time for Brindoval to complete the rebranding, particularly given that many of the required trade-dress changes — the removal of the wave device and the change from the teal-and-white color scheme — were already required by the Court's preliminary injunction order issued more than three months ago.
C. Recommended Fallback Compromise
If Brindoval insists on tying the rebranding deadline to the entry of the dismissal order and this issue threatens to impede the overall settlement, MCB should propose the following hybrid approach:
Primary Fallback. The 120-day rebranding period runs from the date of execution of the Coexistence Agreement. However, Brindoval receives an automatic fourteen (14)-day extension of the 120-day deadline if the Court has not entered the Order of Dismissal with Prejudice within fourteen (14) days of the filing of the Joint Stipulation of Dismissal. In other words, the rebranding deadline would be the later of (a) 120 days after execution or (b) 120 days after execution plus 14 days, but only if the dismissal order has not been entered within 14 days of the filing of the Joint Stipulation. This hybrid approach addresses Brindoval's concern about incurring costs before the litigation is formally resolved while preserving MCB's core interest in a predictable and reasonably expeditious rebranding timeline.
Under no circumstances should MCB agree to a commencement date later than the date of entry of the dismissal order. The fallback position should cap the total rebranding period at 120 days from execution plus a maximum fourteen (14)-day extension, for an outside date of 134 days from execution, or approximately September 26, 2023, assuming execution on May 15, 2023.
Alternative Compromise. As an alternative fallback, MCB should be prepared to propose a sell-through grace period in lieu of a later commencement date. Under this approach, Brindoval must cease all use of the unmodified "MERIDIAN FRESH" mark and the old trade dress — on all newly manufactured or ordered products, on all digital and print marketing materials, and on all e-commerce listings — within 120 days of execution. However, Brindoval may sell through existing inventory bearing the old packaging for an additional thirty (30) days beyond the 120-day period (i.e., a total of 150 days from execution, or approximately October 12, 2023, assuming execution on May 15, 2023). After the 120-day mark, all newly manufactured or ordered products must bear the compliant "BRINDOVAL MERIDIAN FRESH" packaging and trade dress. This approach recognizes the practical reality that Brindoval has existing inventory distributed across 148 retail locations and allows a limited sell-through period while ensuring that no new non-compliant products enter the marketplace after the primary deadline.
MCB should be willing to accept either of these fallback proposals if necessary to close the deal, but should negotiate for the primary fallback (automatic 14-day extension) in the first instance, reserving the alternative compromise (30-day sell-through period) as a last resort.
D. Practical Considerations
Several practical considerations are relevant to this issue:
The rebranding deadline directly affects MCB's brand-protection interests. Every additional day that unmodified "MERIDIAN FRESH" products remain on shelves at Brindoval's 148 retail locations and on its e-commerce platform creates ongoing consumer confusion and corresponding harm to MCB's brand equity. The magnitude of this harm is supported by the expert survey evidence in the record. Dr. Elaine Furman's consumer confusion survey, conducted in October 2022 by Lakeshore Brand Consulting LLC, found a net confusion rate of 31.4% among the 612 survey respondents (using a Squirt/modified Eveready protocol). This confusion rate is well above the threshold typically deemed probative of likelihood of confusion in the Second Circuit and underscores the urgency of completing the rebranding as expeditiously as possible.
MCB should consider requesting that Brindoval provide MCB with a written rebranding implementation timeline within thirty (30) days of execution of the Coexistence Agreement. This timeline should include, at a minimum: (a) the anticipated date for completion of packaging redesign; (b) the anticipated date for submission of the new trade dress to MCB for the required 30-day review; (c) the anticipated date for commencement of production of new packaging; (d) the anticipated date for rollout of new packaging to Brindoval's 148 retail locations; and (e) the anticipated date for updating e-commerce listings on www.crestviewhomegoods.com. This timeline will provide MCB with visibility into Brindoval's rebranding progress and will serve as a baseline for assessing compliance.
Additionally, it is important to note that the replacement trade dress adopted by Brindoval must be submitted to MCB for review at least thirty (30) days before commercial use, pursuant to the trade-dress review provision already agreed upon by the parties. This 30-day review period must be factored into Brindoval's 120-day implementation schedule. Effectively, this means that Brindoval must have its new trade dress finalized and submitted to MCB for review no later than 90 days after execution (i.e., approximately August 13, 2023, assuming execution on May 15, 2023), in order to allow for the 30-day review period and still meet the 120-day rebranding deadline. MCB should highlight this timing constraint in negotiations to ensure that Brindoval understands the practical implications and begins its packaging redesign process promptly upon execution.
VI. Summary of Recommended Positions and Fallback Compromises
The following table summarizes MCB's recommended positions, Brindoval's positions, and the recommended fallback compromises on each of the three remaining open issues:
VII. Recommended Next Steps
Based on the foregoing analysis, I recommend the following next steps:
1. Internal Strategy Discussion. Schedule a call with Alan Ngo and Marcus Delgado at the earliest opportunity to discuss the recommended positions and fallback compromises set forth in this memorandum before we respond to Halverson McKay & Pruitt LLP. I am available at any time this week or early next week.
2. Revised Draft Preparation. Following the internal strategy discussion, prepare revised draft sections of the Coexistence Agreement addressing the three open issues, for transmission to Halverson McKay & Pruitt LLP by approximately April 24, 2023. The revised draft should reflect MCB's primary positions, with bracketed alternative language reflecting the fallback compromises where appropriate, to facilitate discussion. Given Halverson McKay & Pruitt's expressed desire to close negotiations by the end of April 2023, prompt transmission of the revised draft is advisable.
3. Client Authorization. Coordinate with Thomas R. Hennessy, General Counsel of MCB, to confirm client authorization for the recommended positions and fallback compromises outlined in this memorandum. With respect to the rebranding timeline issue (Open Issue No. 3), it may be advisable to loop in Rachel Dominguez (VP, Brand Management) given the operational implications of the rebranding deadline for MCB's own marketing and brand-management activities. Thomas and Rachel should be consulted in particular on MCB's willingness to accept the alternative compromise (30-day sell-through grace period) if it becomes necessary to close the deal.
4. USPTO Procedural Research. Peter Vassiliev should confirm current USPTO practice on two specific questions: (a) the acceptability of channel-of-trade limitations in identifications of goods under TMEP § 1402.03(c), with recent examples of accepted identifications; and (b) the material-alteration standard applicable to amendments adding a house mark prefix under TMEP § 807.13 and 37 C.F.R. § 2.72, including any recent TTAB decisions or examining attorney actions on this point. Peter should report back with his findings by no later than April 21, 2023, so that the results can be incorporated into our revised draft and cover letter.
5. Escrow Agent Coordination. Contact Patricia Dolan at Dralvecen National Bank (60 East 42nd Street, New York, NY 10165) to confirm that the bank's escrow agreement form can accommodate the release mechanics described in this memorandum (including the dual-document release instruction procedure and the contingency provision for delayed entry of the dismissal order). If the standard form requires modification, we should begin negotiating those modifications now so that the escrow agreement is ready for execution simultaneously with the Coexistence Agreement.
6. Target Dates. Our target timeline for closing is as follows:
• Revised draft to Halverson McKay & Pruitt: on or about April 24, 2023
• Final negotiations and agreement on all terms: by end of April 2023
• Execution of Coexistence Agreement, Escrow Agreement, and related closing documents: by mid-May 2023
• Deposit of settlement funds into escrow: within 10 business days of execution (i.e., by early June 2023)
• Filing of Joint Stipulation of Dismissal and TTAB withdrawal: promptly following execution
• Commencement of 120-day rebranding period: upon execution (per MCB's recommended position)
I will circulate a calendar hold for the internal strategy call. Please let me know if you have any questions or wish to discuss any aspect of this memorandum before the call.
VIII. Privilege and Confidentiality Notice
This memorandum is a privileged and confidential attorney work product prepared by Calderwood & Harkness LLP in connection with the representation of Meridian Consumer Brands LLC in the matter captioned Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., S.D.N.Y. Case No. 1:22-cv-09483 and TTAB Opposition No. 91/278,415 (Matter No. 1011-00003). This memorandum is protected by the attorney-client privilege, the work-product doctrine, and all other applicable privileges and protections.
This memorandum, and the information contained herein, is intended solely for the use of the individuals to whom it is addressed and such other attorneys and staff of Calderwood & Harkness LLP as may be working on this matter. This memorandum shall not be disclosed, distributed, or provided to any third party — including, without limitation, opposing counsel, the client's business partners, or any regulatory or judicial authority — without the express prior written consent of both Meridian Consumer Brands LLC and Calderwood & Harkness LLP.
If you have received this memorandum in error, please notify the sender immediately and destroy all copies.
PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT Calderwood & Harkness LLP | Matter No. 1011-00003 | Billing Code 11470-001
Issue | MCB Recommended Position | Brindoval's Position | Recommended Fallback Compromise
1. Escrow Release Trigger | Release upon entry of Court's Order of Dismissal with Prejudice; TTAB withdrawal to be filed simultaneously or prior to filing of Joint Stipulation of Dismissal | Release upon both (a) entry of dismissal order and (b) MCB's withdrawal of TTAB opposition | Accept dual trigger, but second condition satisfied upon filing (not processing or acceptance) of withdrawal of opposition; if TTAB processing exceeds 10 business days after filing, filing itself satisfies condition; Calderwood & Harkness provides written release instructions to Dralvecen National Bank accompanied by filed-stamped Order and proof of TTAB filing
2. Scope of Application Amendment (Ser. No. 97/412,558) | Amend mark to BRINDOVAL MERIDIAN FRESH and include channel-of-trade limitation in identification of goods; if USPTO refuses amendment as material alteration, Brindoval must abandon and refile at own expense within 60 days | Amend mark to BRINDOVAL MERIDIAN FRESH only; no channel limitation in identification of goods | Accept mark amendment without channel limitation, but (a) narrow identification to specified product types, (b) add express covenant that registration does not expand rights beyond those granted by Agreement, (c) provide that Agreement controls in event of conflict with registration, and (d) require abandonment and refiling at Brindoval's expense within 60 days if USPTO refuses mark amendment as material alteration
3. 120-Day Rebranding Deadline | 120 days from execution of Agreement (i.e., approximately September 12, 2023, assuming execution on May 15, 2023) | 120 days from entry of Court's Order of Dismissal with Prejudice | Primary: 120 days from execution, plus automatic 14-day extension if dismissal order not entered within 14 days of filing Joint Stipulation (maximum 134 days from execution). Alternative: 120-day compliance deadline from execution, plus 30-day sell-through grace period for existing inventory (maximum 150 days from execution; all newly manufactured products must bear compliant packaging after 120-day mark)

PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT

MEMORANDUM

MATTER NO.: 1011-00003

BILLING CODE: 11470-001

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