PRIVILEGED AND CONFIDENTIAL ATTORNEY-CLIENT PRIVILEGED ATTORNEY WORK PRODUCT
CALDERWOOD & HARKNESS LLP 1251 Avenue of the Americas, 40th Floor New York, NY 10020
INTERNAL MEMORANDUM — LITIGATION STRATEGY AND RISK ASSESSMENT
TO: Thomas R. Hennessy, General Counsel, Meridian Consumer Brands LLC Rachel Dominguez, Vice President, Brand Management, Meridian Consumer Brands LLC
FROM: Alan Ngo, Responsible Partner, intellectual Property Practice Group, Calderwood & Harkness LLP
DATE: October 7, 2022
RE: Meridian Consumer Brands LLC v. Brindoval Home Goods Inc. — Litigation Strategy and Risk Assessment
MATTER NO.: 1011-00003
BILLING CODE: 11470-001
NOTICE: This memorandum is protected by the attorney-client privilege and the attorney work-product doctrine and has been prepared solely for the purpose of providing legal advice to Meridian Consumer Brands LLC ("MCB") in connection with the above-referenced matter. This memorandum contains confidential legal analysis and strategic recommendations. It should not be distributed to any person or entity outside of MCB and Waypoint Capital Partners LLC without the prior written authorization of Calderwood & Harkness LLP. Any inadvertent disclosure of this memorandum does not constitute a waiver of any applicable privilege.
I. Executive Summary
The purpose of this memorandum is to set forth our recommended multi-track enforcement strategy following the refusal by Brindoval Home Goods Inc. ("Brindoval") — communicated via the October 10, 2022 response letter from Gregory T. Halverson of Halverson McKay & Pruitt LLP — to cease use of the MERIDIAN FRESH mark and to withdraw its pending trademark application, Serial No. 97/412,558. Brindoval's response made clear that it does not intend to voluntarily resolve this matter, and accordingly, formal enforcement proceedings are now necessary to protect MCB's valuable trademark rights and the significant brand equity associated with the MERIDIAN family of marks.
We recommend a three-pronged approach consisting of: (1) filing a Notice of Opposition before the Trademark Trial and Appeal Board ("TTAB") to block Brindoval's pending trademark application; (2) filing a federal complaint in the United States District Court for the Southern District of New York asserting claims under the Lanham Act and New York law; and (3) pursuing an early-stage motion for preliminary injunction, with a strategic focus on Brindoval's confusingly similar trade dress. This multi-track approach is designed to maximize pressure on Brindoval while preserving MCB's full range of remedies.
The strategic imperative underlying this recommendation cannot be overstated. MCB's MERIDIAN brand portfolio is the cornerstone of MCB's cleaning-products business, which generated approximately $94.5 million in revenue during FY 2022 — representing approximately 24.4% of MCB's total FY 2022 revenue of $387 million. The MERIDIAN brand was a central component of the value proposition that underpinned Waypoint Capital Partners LLC's $625 million acquisition of MCB in 2019. Allowing Brindoval's MERIDIAN FRESH mark and trade dress to remain in the market without challenge would risk diluting the distinctiveness and commercial strength of the MERIDIAN brand, eroding consumer goodwill, and impairing the asset value that Waypoint's investment was designed to capture and grow.
Based on our analysis, we anticipate that total legal fees and costs through resolution of this matter will range from approximately $700,000 to $975,000, depending on whether the case proceeds through trial or is resolved through settlement. We believe that the strength of MCB's claims, the clearly confusing nature of Brindoval's mark and trade dress, and the significant monetary exposure Brindoval faces create favorable conditions for settlement at some stage in the proceedings — though the timing of any such resolution is uncertain, and MCB should be prepared to litigate through trial if necessary.
In connection with the preliminary injunction motion and trial preparation, we further recommend the immediate retention of Lakeshore Brand Consulting LLC, specifically Dr. Elaine Furman, Ph.D., to design and conduct a consumer confusion survey. Dr. Furman is one of the leading consumer confusion survey experts in the country, and her work product will be critical to demonstrating the likelihood of confusion before the court.
This memorandum provides a detailed discussion of the background, recommended litigation strategy, risk assessment, cost projections, and next steps. We respectfully request that MCB authorize Calderwood & Harkness to proceed with the recommended strategy at the earliest practicable date, given the time-sensitive nature of several of the contemplated actions.
II. Background and Current Status
A. MCB's Trademark Portfolio
MCB is the owner of a well-established family of MERIDIAN marks used in connection with cleaning preparations in International Class 3. The following federal trademark registrations form the core of MCB's relevant intellectual property portfolio:
1. U.S. Registration No. 4,218,506 — MERIDIAN (standard character mark, International Class 3). This registration was issued by the United States Patent and Trademark Office on August 14, 2012. The mark covers cleaning preparations, including all-purpose cleaners, glass cleaners, surface disinfectants, and related products. MCB claims a date of first use in commerce of approximately 2011, giving it over eleven years of continuous and substantially exclusive use at the time of this memorandum.
2. U.S. Registration No. 5,034,771 — MERIDIAN CLEAN (standard character mark, International Class 3). This registration was issued on October 18, 2016, and covers a substantially similar range of cleaning preparations. The MERIDIAN CLEAN mark is used as a sub-brand within the broader MERIDIAN cleaning product line and reinforces MCB's rights in the MERIDIAN mark as a source identifier.
3. U.S. Registration No. 5,589,320 — MERIDIAN (stylized logo incorporating a wave device, International Class 3). This registration was issued on July 10, 2018. The stylized mark features the word "MERIDIAN" rendered in a distinctive font accompanied by a wave-form graphic device. This registration is particularly significant because Brindoval's trade dress for the MERIDIAN FRESH product line incorporates a wave device that is strikingly similar to the registered wave device depicted in this registration.
All three registrations are in International Class 3 and cover cleaning preparations. All three registrations are live, in full force and effect, and have been maintained with the USPTO in accordance with applicable statutory requirements. The registrations constitute prima facie evidence of the validity of the marks, MCB's ownership, and MCB's exclusive right to use the marks in commerce in connection with the identified goods. See 15 U.S.C. § 1115(a).
MCB has used the MERIDIAN marks continuously and extensively since approximately 2011 in connection with a full range of household cleaning products. Over the period from 2011 through 2022, MCB has invested a cumulative total of approximately $47.2 million in advertising and promotional expenditures supporting the MERIDIAN brand — an average of approximately $3.93 million per year. These advertising expenditures have been directed toward national television, digital media, print advertising, in-store promotions, and social media campaigns, and have generated significant consumer awareness and brand recognition.
The MERIDIAN cleaning product line generated approximately $94.5 million in revenue during FY 2022, making it the single largest product line within MCB's overall product portfolio. The MERIDIAN line is distributed nationwide through major grocery chains, club warehouse stores (including Harborview Enterprises and Westmark Industries), mass-market retailers, and e-commerce platforms (including Penmark Holdings and MCB's direct-to-consumer website). MCB's distribution extends to all fifty states, the District of Columbia, and select U.S. territories.
The strength and commercial significance of the MERIDIAN brand are well-documented and provide a compelling foundation for our infringement claims. As discussed in Section III below, these facts weigh heavily in MCB's favor under the likelihood-of-confusion analysis.
B. Brindoval's Infringing Activities
Brindoval Home Goods Inc. is a Minnesota corporation with its principal place of business at 7200 France Avenue South, Suite 300, Edina, Minnesota 55435. Brindoval operates a national home-goods retail chain with 148 retail store locations across twelve Midwestern and Mountain West states and a growing e-commerce platform accessible at www.crestviewhomegoods.com. Brindoval reported FY 2022 revenue of approximately $2.1 billion, making it a substantially larger enterprise than MCB by overall revenue. Key personnel at Brindoval include Douglas P. Lindstrom (Chief Executive Officer), Karen A. Whitfield (General Counsel), and Nathan Cho (Vice President, Private Label Development).
On May 12, 2022, Brindoval filed a trademark application with the USPTO, Serial No. 97/412,558, for the mark MERIDIAN FRESH in standard character form in International Class 3, covering cleaning preparations. The application was published for opposition in the Official Gazette on September 6, 2022.
In or about early July 2022, Brindoval launched its MERIDIAN FRESH product line, which consists of a range of household cleaning products including an all-purpose spray, a glass cleaner, disinfecting wipes, and a dish soap. These products are sold in all 148 of Brindoval's retail store locations and through the Brindoval e-commerce platform. The MERIDIAN FRESH products are marketed as a Brindoval private-label offering and are positioned in the same product category — household cleaning preparations — as MCB's MERIDIAN products.
Of particular concern is the trade dress adopted by Brindoval for the MERIDIAN FRESH product line. The MERIDIAN FRESH packaging features a teal-and-white color scheme and a stylized wave device that are confusingly similar to the trade dress used by MCB for its MERIDIAN products. MCB's packaging has featured a teal-and-white color scheme and the wave device depicted in U.S. Registration No. 5,589,320 for over four years. The visual similarity between the two product lines is striking and, in our assessment, is likely to cause significant consumer confusion at the point of sale.
Based on publicly available information and trade-channel intelligence gathered by MCB's sales team, we estimate that Brindoval's MERIDIAN FRESH product line generated approximately $6.8 million in gross revenue during its first five months on the market (July through November 2022). Annualized, this figure projects to approximately $16.3 million. These revenue figures are relevant both to the damages analysis and to the assessment of the harm being suffered by MCB through ongoing consumer confusion.
C. Pre-Litigation Activity to Date
The following pre-litigation steps have been taken in connection with this matter:
September 26, 2022 — Cease-and-Desist Letter. On behalf of MCB, Calderwood & Harkness transmitted a detailed cease-and-desist letter to Brindoval demanding that Brindoval (i) immediately cease all use of the MERIDIAN FRESH mark in connection with cleaning products and all other goods and services; (ii) withdraw its pending trademark application, Serial No. 97/412,558; (iii) recall and destroy all packaging, labels, advertising materials, and promotional items bearing the MERIDIAN FRESH mark; and (iv) confirm compliance in writing within fifteen business days. The letter set forth MCB's trademark registrations, documented MCB's extensive use and investment in the MERIDIAN brand, and provided a detailed analysis of the likelihood of confusion between MERIDIAN FRESH and MCB's MERIDIAN family of marks.
October 10, 2022 — Brindoval's Response. Halverson McKay & Pruitt LLP responded on behalf of Brindoval by letter dated October 10, 2022, signed by Gregory T. Halverson, lead partner on the matter. The response denied any infringement of MCB's trademark rights, asserted that Brindoval had independently adopted the MERIDIAN FRESH mark without knowledge of or reference to MCB's MERIDIAN brand, and declined to cease use of the mark or withdraw the pending application. The letter further argued that the word "meridian" is a common English word with geographic and directional connotations and that any trademark rights MCB holds in MERIDIAN are narrow in scope and do not extend to the MERIDIAN FRESH formative. The response did not offer any basis for settlement or further negotiation.
October 3, 2022 — Internal Likelihood-of-Confusion Analysis. Prior to receiving Brindoval's response, Christy Bauer, Lead Associate, prepared a detailed internal memorandum analyzing the strength of MCB's potential infringement claims under the Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), likelihood-of-confusion factors. Ms. Bauer's analysis concluded that MCB has a strong case on the merits, with at least six of the eight Polaroid factors weighing in MCB's favor. This analysis has informed the litigation strategy recommendations set forth below.
In light of Brindoval's refusal to resolve this matter voluntarily, we believe that formal enforcement proceedings are now both necessary and appropriate.
III. Recommended Litigation Strategy
We recommend that MCB pursue a coordinated, three-track enforcement strategy designed to (a) block Brindoval's ability to obtain a federal trademark registration for MERIDIAN FRESH, (b) obtain injunctive relief prohibiting Brindoval's continued use of the mark and trade dress, and (c) recover monetary damages for the harm already caused to MCB's brand. Each of the three tracks is discussed in detail below.
A. Track 1: TTAB Opposition (Administrative Proceeding)
1. Filing of Notice of Opposition
We recommend that MCB file a Notice of Opposition before the Trademark Trial and Appeal Board against Brindoval's pending trademark application, Serial No. 97/412,558, for the mark MERIDIAN FRESH in standard character form in International Class 3. The opposition will be filed on behalf of MCB in its capacity as the owner of prior registrations that are likely to be damaged by the issuance of the applied-for mark.
The primary basis for the opposition will be likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Specifically, MCB will assert that registration of MERIDIAN FRESH for cleaning preparations in International Class 3 would be likely to cause confusion, mistake, or deception among consumers in view of MCB's prior registrations, including U.S. Registration Nos. 4,218,506 (MERIDIAN), 5,034,771 (MERIDIAN CLEAN), and 5,589,320 (MERIDIAN stylized with wave device), all of which cover cleaning preparations in the same international class.
The statutory thirty-day opposition period began to run on the date of publication in the Official Gazette, September 6, 2022. Calderwood & Harkness previously obtained an extension of time to oppose on MCB's behalf. Based on the extended deadline, we recommend that the Notice of Opposition be filed no later than October 14, 2022, to ensure compliance with the applicable deadline. The TTAB will assign an opposition number upon filing, and the proceeding will be docketed according to the Board's standard schedule.
2. Strategic Purpose
The TTAB opposition serves several important strategic purposes within the broader enforcement framework:
First, a sustained opposition would prevent Brindoval from obtaining a federal registration for MERIDIAN FRESH. Federal registration carries significant legal advantages, including nationwide constructive notice of the registrant's claim of ownership, a statutory presumption of validity, and the ability to become incontestable after five years. Blocking Brindoval's registration denies it these benefits and preserves MCB's exclusive position in the marketplace for MERIDIAN-family marks in International Class 3.
Second, the TTAB opposition creates a parallel administrative proceeding that exerts additional pressure on Brindoval beyond the federal court litigation. The existence of a contested opposition proceeding imposes discovery obligations and litigation costs on Brindoval within the administrative system, while simultaneously requiring Brindoval to defend itself in federal court.
Third, and importantly, the TTAB opposition can be suspended pending resolution of the federal district court proceedings if both tracks are pursued simultaneously. Under TTAB practice, either party may request a suspension of the opposition proceeding in view of the related civil action. See TBMP § 510.02. This allows MCB to file the opposition to preserve its rights and secure the administrative proceeding without being required to litigate on both fronts concurrently. If the federal court case resolves the likelihood-of-confusion issue in MCB's favor, the TTAB proceeding can be resolved in a coordinated fashion.
Fourth, the TTAB opposition is a lower-cost proceeding relative to federal court litigation. TTAB proceedings are limited to the question of registrability — no damages can be awarded and no injunctive relief can be issued. This makes the TTAB an efficient vehicle for addressing the registration issue while the broader enforcement claims are pursued in district court.
3. Potential Outcomes
The TTAB opposition can produce the following outcomes:
• Opposition sustained: The Board will refuse registration of MERIDIAN FRESH, and the application will be abandoned. This is the optimal outcome and would prevent Brindoval from obtaining the constructive-notice and other benefits of federal registration.
• Opposition dismissed: The Board may find that MERIDIAN FRESH is not confusingly similar to MCB's marks. This outcome is not dispositive of the federal court claims, as the TTAB applies its own set of du Pont factors and its decision does not bind the district court. However, an adverse TTAB decision could be cited by Brindoval in the federal case as persuasive authority.
• Settlement: The opposition proceeding may be settled as part of a broader coexistence agreement or settlement negotiation. TTAB proceedings are frequently resolved through negotiated agreements, and the pendency of the opposition provides MCB with additional leverage in any settlement discussions.
B. Track 2: Federal Court Complaint (S.D.N.Y.)
1. Proposed Causes of Action
We recommend that MCB file a complaint in the United States District Court for the Southern District of New York asserting the following claims:
Count I: Trademark Infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). This count will allege that Brindoval's use of the MERIDIAN FRESH mark in connection with cleaning products constitutes trademark infringement by creating a likelihood of confusion with MCB's federally registered MERIDIAN marks (U.S. Registration Nos. 4,218,506, 5,034,771, and 5,589,320). Section 32(1) provides a cause of action for registered mark holders against any person who, without the consent of the registrant, uses in commerce a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, distribution, or advertising of goods where such use is likely to cause confusion, mistake, or deception. MCB's complaint will establish the priority and validity of its registrations, the confusing similarity of MERIDIAN FRESH to MERIDIAN and MERIDIAN CLEAN, the identity of the goods and trade channels, and the likelihood of consumer confusion under the Polaroid factors.
Count II: False Designation of Origin and Unfair Competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). This count will address both the word mark and the trade dress aspects of Brindoval's conduct. Section 43(a) prohibits the use in commerce of any word, term, name, symbol, or device, or any false designation of origin, which is likely to cause confusion as to the origin, sponsorship, or approval of goods. MCB's claim under this section will focus on (a) Brindoval's use of the MERIDIAN FRESH name as a false designation of origin suggesting an affiliation with MCB, and (b) Brindoval's adoption of a teal-and-white color scheme and a stylized wave device that are confusingly similar to MCB's established and registered trade dress. The trade dress claim is particularly strong given the visual similarity between Brindoval's packaging and MCB's registered wave-device logo (U.S. Registration No. 5,589,320). Section 43(a) provides remedies for both registered and unregistered marks and is the appropriate vehicle for asserting the trade dress claim.
Count III: Trademark Dilution under New York General Business Law § 360-l. This count will assert that Brindoval's use of MERIDIAN FRESH dilutes the distinctive quality of MCB's MERIDIAN marks within New York. Under New York law, the owner of a mark possessing a high degree of distinctiveness may obtain injunctive relief against another person's commercial use of the mark if such use begins after the owner's mark has become distinctive and causes the likelihood of dilution of the distinctive quality of the mark. MCB's MERIDIAN mark, with over eleven years of continuous use and $47.2 million in cumulative advertising investment, possesses a high degree of distinctiveness that qualifies for protection under the New York dilution statute. This claim provides an additional basis for injunctive relief and does not require proof of likelihood of confusion, thereby supplementing the Lanham Act claims.
2. Choice of Forum: U.S. District Court for the Southern District of New York
We recommend filing the complaint in the United States District Court for the Southern District of New York for the following reasons:
MCB is headquartered at 450 Park Avenue South, New York, New York 10016, which is located within the Southern District of New York. MCB's senior management, including Thomas Hennessy (General Counsel) and Rachel Dominguez (VP, Brand Management), are based in New York, as are the principal business records and marketing files relevant to this litigation. The Southern District of New York is MCB's home forum and offers the greatest convenience for MCB's witnesses and counsel.
Personal jurisdiction over Brindoval can be established on the basis of Brindoval's purposeful e-commerce activities directed at New York consumers. Brindoval operates the website www.crestviewhomegoods.com, through which it actively sells MERIDIAN FRESH products to consumers in New York and throughout the United States. Brindoval's solicitation of and sales to New York consumers constitute purposeful availment of the New York market sufficient to support the exercise of specific personal jurisdiction under New York's long-arm statute and the Due Process Clause. We anticipate that Brindoval may challenge personal jurisdiction, but we believe that the record of Brindoval's e-commerce activities in New York, combined with MCB's New York headquarters and the location of the alleged injury, will support the court's exercise of jurisdiction.
The Second Circuit applies the well-established eight-factor test set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), for determining likelihood of confusion in trademark infringement cases. As detailed in Christy Bauer's October 3 internal memorandum, the Polaroid factors weigh heavily in MCB's favor. The strength of the MERIDIAN marks (based on inherent distinctiveness and extensive commercial use), the high degree of similarity between MERIDIAN/MERIDIAN CLEAN and MERIDIAN FRESH, the identity of the goods (both cleaning preparations in International Class 3), the overlapping trade channels, and the similarity of the trade dress all support a finding of likelihood of confusion. The Second Circuit's well-developed body of trademark jurisprudence provides a favorable and predictable legal framework for MCB's claims.
We anticipate that Brindoval may move to transfer the case to the District of Minnesota under 28 U.S.C. § 1404(a), arguing that Brindoval's headquarters, employees, and relevant documents are located in Minnesota and that the case has a stronger connection to that district. We assess this motion as unlikely to succeed. MCB's headquarters, management team, and key witnesses are located in New York; the injury to MCB's brand is experienced nationwide but is particularly acute in New York, where MCB maintains its principal business operations; and Brindoval's own e-commerce activities create significant contacts with New York. Courts in the Southern District of New York routinely retain jurisdiction over trademark cases filed by local plaintiffs against out-of-state defendants with e-commerce contacts, and the balance of convenience factors generally favor the plaintiff's chosen forum in these circumstances. A more detailed analysis of the venue-transfer risk is set forth in Section IV.E below.
3. Relief Sought
MCB's complaint will seek the following forms of relief:
Injunctive Relief. MCB will seek both preliminary and permanent injunctive relief, including (a) an order enjoining Brindoval from using the mark MERIDIAN FRESH or any confusingly similar mark in connection with cleaning products or any other goods or services; (b) an order enjoining Brindoval from using the teal-and-white color scheme and wave device trade dress that are confusingly similar to MCB's registered trade dress; and (c) an order requiring Brindoval to recall from all retail and distribution channels, and destroy, all packaging, labeling, advertising, and promotional materials bearing the MERIDIAN FRESH mark and/or the infringing trade dress.
Monetary Damages. MCB will seek monetary relief including (a) MCB's lost profits attributable to consumer confusion caused by Brindoval's infringement; (b) disgorgement of Brindoval's profits derived from sales of MERIDIAN FRESH products, which we estimate at approximately $6.8 million to date and approximately $16.3 million on an annualized basis; (c) treble damages under 15 U.S.C. § 1117(a) to the extent MCB can establish that Brindoval's infringement was willful; and (d) pre-judgment and post-judgment interest. The availability of treble damages and disgorgement of profits provides significant economic leverage and is likely to be a meaningful factor in any settlement analysis.
Attorney Fees. MCB will seek recovery of its reasonable attorney fees as an "exceptional case" under 15 U.S.C. § 1117(a). While the "exceptional case" standard is demanding, MCB may be able to establish the requisite showing if evidence of willfulness or bad faith is developed during discovery — for example, evidence that Brindoval's adoption of the MERIDIAN FRESH mark and trade dress was informed by knowledge of MCB's MERIDIAN brand.
Destruction Order. As noted above, MCB will seek an order requiring Brindoval to recall and destroy all infringing packaging, labels, and materials. This remedy is important both to prevent ongoing confusion and to send a deterrent signal.
4. Timing. We recommend filing the federal complaint in early November 2022, with a target filing date of November 7, 2022. This timing is designed to maintain the momentum generated by the cease-and-desist exchange and to coordinate with the TTAB opposition filing (October 14, 2022) and the expert retention schedule. Filing in early November also allows sufficient time for Dr. Furman to design and begin administering the consumer confusion survey so that survey results will be available to support the preliminary injunction motion, which we anticipate filing in mid-to-late November.
C. Track 3: Preliminary Injunction Motion
1. Basis and Four-Factor Test
The preliminary injunction motion will be a critical component of the litigation strategy. An early injunction — or even a partial injunction targeting the trade dress — would provide MCB with immediate protection against ongoing harm and would significantly increase settlement pressure on Brindoval. Under Second Circuit law, a movant seeking a preliminary injunction must demonstrate: (a) a likelihood of success on the merits; (b) a likelihood of irreparable harm in the absence of preliminary relief; (c) that the balance of hardships tips in the movant's favor; and (d) that the injunction is in the public interest. See Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008); Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010). We believe MCB can make a strong showing on all four factors.
(a) Likelihood of Success on the Merits. MCB has a strong probability of prevailing on its trademark infringement and false designation of origin claims. Under the Polaroid analysis, the following factors weigh in MCB's favor:
• Strength of the mark. The MERIDIAN mark possesses both inherent distinctiveness (as an arbitrary or suggestive mark when used in connection with cleaning products) and substantial acquired distinctiveness, demonstrated by over eleven years of continuous use, $47.2 million in cumulative advertising expenditures, and $94.5 million in FY 2022 revenue.
• Similarity of the marks. MERIDIAN FRESH is highly similar to MERIDIAN and MERIDIAN CLEAN. The dominant element of all three marks — "MERIDIAN" — is identical. The addition of the descriptive word "FRESH" to Brindoval's mark does little to distinguish it and may in fact suggest a product-line extension of MCB's existing MERIDIAN brand.
• Competitive proximity / relatedness of the goods. The goods are identical — both MCB and Brindoval sell household cleaning preparations in International Class 3.
• Bridging the gap. This factor is irrelevant where the goods are already in direct competition, which they are here.
• Actual confusion. MCB's customer service team has received reports of actual consumer confusion, which Rachel Dominguez will address in her declaration. The consumer confusion survey to be conducted by Dr. Furman is expected to demonstrate a significant net confusion rate.
• Brindoval's good faith. Brindoval's adoption of a mark and trade dress that closely resemble MCB's established brand raises questions about good faith. Discovery may reveal that Brindoval's product development team was aware of MCB's MERIDIAN products when developing the MERIDIAN FRESH line.
• Quality of Brindoval's products. If Brindoval's products are of lesser quality than MCB's, consumer confusion could damage MCB's reputation. Even if the quality is comparable, the existence of two similarly branded products in the same category causes harm by diluting MCB's brand identity.
• Sophistication of consumers. Household cleaning products are low-cost, frequently purchased consumer goods. Consumers exercise a relatively low degree of care when selecting cleaning products, increasing the likelihood of confusion at the point of sale.
In sum, the Polaroid analysis strongly favors MCB. We expect the consumer confusion survey being designed by Dr. Furman to provide additional empirical support for the likelihood of confusion. Surveys using the Squirt or modified Eveready protocol — the methodologies most widely accepted in the Second Circuit — have been used successfully in comparable cases involving household consumer products. Dr. Furman's survey is expected to demonstrate a net confusion rate well in excess of the fifteen percent threshold that courts in the Second Circuit have generally considered probative of confusion.
(b) Irreparable Harm. In trademark infringement cases, courts in the Second Circuit have recognized that a showing of likelihood of confusion gives rise to a presumption of irreparable harm. See U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 540 (S.D.N.Y. 2011). MCB will argue that the ongoing sale of MERIDIAN FRESH products bearing a confusingly similar mark and trade dress is causing irreparable damage to MCB's brand equity and goodwill — damage that is, by its nature, difficult or impossible to quantify in monetary terms. Every day that Brindoval's products remain on shelves with the MERIDIAN FRESH brand and the teal-and-white wave-device trade dress, consumers are at risk of associating Brindoval's products with MCB or, conversely, of becoming confused about the source and sponsorship of the products. This erosion of brand identity and consumer trust constitutes classic irreparable harm that cannot be remedied by a damages award after trial.
(c) Balance of Hardships. The balance of hardships tips decidedly in MCB's favor. MCB's MERIDIAN cleaning line is an established, market-leading brand generating $94.5 million in annual revenue. MCB has invested over $47 million in building consumer awareness and brand equity over more than a decade. In contrast, Brindoval's MERIDIAN FRESH product line was launched only in July 2022 — approximately three months before the anticipated filing of this action. The MERIDIAN FRESH line is a recently launched private-label offering within Brindoval's much larger retail operation. The burden on Brindoval of rebranding or discontinuing a nascent product line is substantially less than the harm MCB would suffer from ongoing consumer confusion with respect to its flagship brand. Brindoval is a $2.1 billion company that can readily absorb the cost of rebranding a single product line that has generated approximately $6.8 million in revenue over five months.
(d) Public Interest. The public has a strong interest in avoiding consumer confusion and deception in the marketplace. Trademark law serves the dual purpose of protecting the trademark owner's investment in its brand and protecting consumers from being misled about the source, sponsorship, or quality of the goods they purchase. An injunction preventing Brindoval from using a confusingly similar mark and trade dress serves both of these purposes and is consistent with the public interest.
2. Strategic Focus: Trade Dress
We recommend that the preliminary injunction motion place particular emphasis on the trade dress aspects of Brindoval's infringement — specifically, the teal-and-white color scheme and the stylized wave device used on MERIDIAN FRESH packaging. There are several reasons for this strategic focus.
First, the trade dress case may be more readily demonstrable at the preliminary injunction stage than the word-mark case standing alone. The visual similarity between Brindoval's MERIDIAN FRESH packaging and MCB's registered wave-device logo (U.S. Registration No. 5,589,320) is immediately apparent and can be demonstrated through a simple side-by-side comparison. Courts frequently grant preliminary relief based on trade dress infringement where the visual similarity is striking and the risk of point-of-sale confusion is evident.
Second, while we will also seek to enjoin Brindoval's use of the MERIDIAN FRESH word mark, we acknowledge that there is a risk that the court may view "MERIDIAN FRESH" as sufficiently distinguishable from "MERIDIAN" or "MERIDIAN CLEAN" in word form alone, particularly given that Brindoval has added the descriptive modifier "FRESH." Some courts have found that the addition of a descriptive word to an otherwise similar mark can reduce the likelihood of confusion to a level insufficient to warrant preliminary injunctive relief, while reserving the question for fuller development at trial. By contrast, the trade dress claim does not depend on a fine-grained comparison of word marks — it rests on the overall visual impression of the packaging, which is powerfully similar.
Third, even partial relief — an injunction limited to the trade dress — would be a significant victory for MCB. An order requiring Brindoval to modify its packaging to remove the teal-and-white color scheme and wave device would eliminate the most visually confusing elements of Brindoval's presentation and substantially reduce point-of-sale confusion. It would also force Brindoval to incur the cost of redesigning and repackaging its entire MERIDIAN FRESH product line, creating significant settlement pressure. In practice, many defendants facing an order to modify trade dress elect to negotiate a broader resolution rather than bear the cost and disruption of a partial rebrand.
We will, of course, seek relief on both the word-mark and trade-dress claims in the preliminary injunction motion. However, by framing the motion with a primary emphasis on the trade dress, we increase the probability of obtaining at least some form of immediate relief.
3. Supporting Evidence
The preliminary injunction motion will be supported by the following evidence:
Declaration of Rachel Dominguez, VP, Brand Management, MCB. Ms. Dominguez will provide a detailed declaration attesting to MCB's history of use of the MERIDIAN marks, the development and evolution of the MERIDIAN brand, the advertising and marketing expenditures supporting the brand, the revenue generated by the MERIDIAN cleaning product line, the establishment and significance of the teal-and-white color scheme and wave-device trade dress, and specific instances of actual consumer confusion that have been reported to MCB's customer service team since the launch of Brindoval's MERIDIAN FRESH line. Ms. Dominguez's declaration will also address the irreparable harm that MCB is suffering from the ongoing infringement and the impact on MCB's brand equity and consumer goodwill.
Declaration of Dr. Elaine Furman, Ph.D., Lakeshore Brand Consulting LLC. Dr. Furman will provide a declaration presenting the design, methodology, results, and conclusions of the consumer confusion survey. The survey will measure the extent to which consumers are likely to believe that MERIDIAN FRESH products are produced by, sponsored by, or affiliated with the maker of MERIDIAN products. We anticipate that the survey results will demonstrate a statistically significant net confusion rate that strongly supports a finding of likelihood of confusion.
Exhibits. The motion will be accompanied by exhibits including (a) certified copies of MCB's trademark registration certificates; (b) side-by-side photographic comparisons of MCB's MERIDIAN packaging and Brindoval's MERIDIAN FRESH packaging, highlighting the similarities in the word marks, color schemes, and wave-device graphics; (c) representative samples of MCB's advertising and promotional materials from 2011 through 2022; (d) sales data and revenue figures for the MERIDIAN product line; (e) the September 26, 2022 cease-and-desist letter and Brindoval's October 10, 2022 response; and (f) copies of Brindoval's trademark application and the relevant Official Gazette publication.
4. Timing. We recommend filing the motion for preliminary injunction either concurrently with the complaint or within two weeks of the complaint filing. Our target is to file the motion in mid-to-late November 2022. This timing is driven by the need to have the consumer confusion survey results available to support the motion. As discussed in Section VI below, we expect to engage Dr. Furman by October 5, 2022, and to receive preliminary survey results by mid-November. If the survey timeline permits, filing the motion concurrently with the complaint on November 7, 2022 would be ideal; however, a filing within two weeks of the complaint (i.e., by approximately November 21, 2022) remains well within the window for effective preliminary relief.
IV. Risk Assessment
While we believe MCB has a strong case on the merits, a thorough assessment of the risks and potential obstacles is essential to informed decision-making. This section addresses the principal risks we have identified.
A. Brindoval's Size and Litigation Resources
As noted above, Brindoval is a substantially larger company than MCB, with FY 2022 revenue of approximately $2.1 billion compared to MCB's $387 million. Brindoval has the financial resources to fund an aggressive and protracted defense, including the retention of top-tier outside counsel and expert witnesses. Brindoval's outside counsel, Halverson McKay & Pruitt LLP, is a reputable intellectual property firm with significant experience in trademark defense litigation. The Halverson McKay team on this matter includes Gregory T. Halverson (lead partner), Megan Janssen (senior associate), and David Kowalski (associate), all of whom have handled contested trademark matters in federal court and before the TTAB.
The risk presented by Brindoval's superior resources is not that MCB's case lacks merit, but rather that Brindoval may pursue a scorched-earth discovery strategy designed to increase MCB's litigation costs and protract the proceedings. This could include broad document requests, numerous depositions, extensive expert challenges, and aggressive motion practice. MCB should be prepared for the possibility that litigation costs may trend toward the higher end of the estimated range if Brindoval adopts this approach. The multi-track strategy we recommend is designed in part to counterbalance this risk by creating multiple fronts on which Brindoval must defend itself, thereby increasing Brindoval's own costs and creating settlement incentives.
B. Anticipated Defenses and Counterclaims
Based on the positions taken in Brindoval's October 10 response letter and our experience with similar cases, we anticipate that Brindoval may assert the following defenses and counterclaims:
Declaratory Judgment Counterclaim. Brindoval is likely to file a counterclaim seeking a declaratory judgment of non-infringement. In support of this counterclaim, Brindoval will argue that MERIDIAN FRESH is sufficiently distinct from MCB's MERIDIAN marks and that the addition of the word "FRESH" creates a different commercial impression. Brindoval may also argue that the word "meridian" is merely descriptive or geographically suggestive in the context of cleaning products, and that MCB's MERIDIAN mark is therefore weak and entitled to only a narrow scope of protection. A declaratory judgment counterclaim is standard practice in cases of this type and does not significantly alter the litigation dynamics, as the court will analyze the same Polaroid factors in evaluating both the infringement claims and the counterclaim.
Descriptiveness and Weakness Arguments. Brindoval's October 10 letter foreshadowed an argument that "meridian" is a common English word with geographic and directional connotations, and that MCB's MERIDIAN mark is therefore weak and should not be given a broad scope of protection. We believe this argument has limited force. While "meridian" is indeed a common English word, it is arbitrary when used in connection with cleaning products — there is no logical connection between the word "meridian" (referring to a line of longitude or a high point) and household cleaning preparations. Courts in the Second Circuit have consistently held that arbitrary marks are among the strongest categories of marks and are entitled to broad protection. Moreover, MCB's extensive use and advertising investment have created significant acquired distinctiveness, further strengthening the mark. MCB must be prepared to present evidence of both inherent and acquired distinctiveness, including the advertising expenditure data, revenue figures, consumer recognition evidence, and the results of Dr. Furman's survey.
Independent Adoption Defense. Brindoval's response asserted that it independently adopted the MERIDIAN FRESH mark without knowledge of or reference to MCB's MERIDIAN brand. If credited, this assertion could mitigate the "bad faith" factor under the Polaroid analysis and could be relevant to the willfulness inquiry for purposes of treble damages and attorney fees. However, independent adoption is not a defense to trademark infringement. Even if Brindoval genuinely adopted the mark independently, it remains liable for infringement if the use of the mark creates a likelihood of confusion with MCB's prior marks. Moreover, we note that MCB's MERIDIAN brand has been marketed nationally for over eleven years with significant advertising support, which makes a claim of complete ignorance by a major home-goods retailer operating in the same product category somewhat difficult to credit. Discovery into Brindoval's product development process — including the involvement of Nathan Cho (VP, Private Label Development) and any market research conducted prior to the launch of MERIDIAN FRESH — may reveal evidence bearing on this issue.
Fair Use and Parody Defenses. These defenses are unlikely to be asserted given the purely commercial context of Brindoval's use of the MERIDIAN FRESH mark. Fair use applies where a defendant uses a term in its descriptive sense, not as a trademark. Parody applies where a defendant's use is intended as a commentary or critique of the original mark. Neither defense has any apparent applicability to Brindoval's straight commercial use of MERIDIAN FRESH as a source identifier for cleaning products. Nonetheless, we will be prepared to address these defenses if raised.
Laches. Brindoval may argue that MCB unreasonably delayed in asserting its rights, thereby prejudicing Brindoval's ability to defend itself. This defense has minimal viability in the present circumstances. Brindoval launched MERIDIAN FRESH in early July 2022, the application was published for opposition on September 6, 2022, and MCB sent the cease-and-desist letter on September 26, 2022 — approximately two and a half months after the product launch and within the statutory opposition period. This timeline reflects a prompt and diligent response by MCB, and no court would find unreasonable delay on these facts.
C. Rebuttal Expert Survey
In connection with the preliminary injunction motion and at trial, Brindoval will almost certainly retain its own survey expert to rebut the findings of Dr. Furman's consumer confusion survey. We should anticipate vigorous challenges to the survey methodology, including the design of the survey instrument, the definition of the respondent universe, the selection and presentation of stimuli, the use of control conditions, and the interpretation of the results. Daubert challenges to the admissibility of survey evidence are common in trademark litigation, and Brindoval's counsel at Halverson McKay & Pruitt is experienced in this area.
Based on intelligence gathered from publicly available sources and prior encounters in the trademark litigation community, we believe Brindoval may retain Pinnacle Research Group Inc. for its rebuttal survey work. Pinnacle Research Group is an applied statistics and survey methodology firm located in Minneapolis, Minnesota. Its principal, Dr. Ronald Trask, Ph.D., is an experienced survey expert who has testified in numerous trademark cases, often on behalf of defendants challenging plaintiff confusion surveys. Dr. Trask's rebuttal reports typically focus on methodological criticisms, and he is known for presenting alternative surveys designed to demonstrate low confusion rates.
To mitigate this risk, it is essential that Dr. Furman's survey be designed and administered with the highest degree of methodological rigor. Dr. Furman's use of the Squirt or modified Eveready protocol — which is the standard methodology accepted in the Second Circuit — should withstand scrutiny. We will work closely with Dr. Furman to ensure that the survey instrument, respondent universe, stimuli, and control conditions are all consistent with current best practices and applicable evidentiary standards.
D. Potential Preliminary Injunction Risks
While we are confident in the overall strength of the preliminary injunction motion, there are risks that must be acknowledged:
Partial Relief. As discussed in Section III.C.2 above, there is a risk that the court may grant the preliminary injunction only in part. Specifically, the court may enjoin the trade dress elements (the teal-and-white color scheme and wave device) while declining to enjoin the use of the word mark "MERIDIAN FRESH" pending trial. The court may view the word-mark question as presenting a closer issue that warrants fuller development through discovery and trial. As noted, partial relief would still represent a significant victory for MCB — forcing Brindoval to modify its packaging and reducing the most visible source of confusion — but it would leave the word mark in play during the pendency of the case.
Bond Requirement. Under Federal Rule of Civil Procedure 65(c), the court may require MCB to post a security bond as a condition of issuing the preliminary injunction. The bond is intended to compensate the enjoined party for costs and damages incurred if the injunction is later found to have been wrongfully issued. The amount of the bond is within the court's discretion and is typically tied to the court's estimate of the potential harm to the defendant from the injunction. Given the relatively limited revenue generated by the MERIDIAN FRESH line to date (approximately $6.8 million over five months), we anticipate that any bond requirement would be manageable. Courts in the Southern District of New York have considerable latitude in setting bond amounts, and in trademark cases involving clear evidence of confusion, bond amounts are often set at modest levels or waived entirely.
E. Venue Challenge
As noted in Section III.B.2 above, Brindoval may move to transfer the case to the United States District Court for the District of Minnesota under 28 U.S.C. § 1404(a), arguing that the convenience of the parties and witnesses and the interest of justice favor adjudication in Minnesota, where Brindoval is headquartered and where the majority of its operations are located.
We assess this motion as having limited prospects of success. The relevant considerations under § 1404(a) include the plaintiff's choice of forum, the convenience of the parties and witnesses, and the location of relevant evidence. MCB's headquarters are in the Southern District of New York; MCB's key management witnesses (including Thomas Hennessy and Rachel Dominguez) are located in New York; MCB's marketing, brand management, and financial records are maintained in New York; and the harm to MCB's brand is experienced in significant part in New York and the surrounding region. While Brindoval's witnesses and documents are located in Minnesota, the existence of Brindoval's e-commerce operations directed at New York consumers and the nationwide nature of the trademark dispute weigh against transfer. The plaintiff's choice of its home forum is entitled to substantial deference, and we believe the court will decline to transfer.
In the unlikely event that the case is transferred to the District of Minnesota, MCB's claims would remain viable. The Eighth Circuit applies its own multi-factor test for likelihood of confusion, which is broadly similar to the Polaroid test, and we believe MCB's claims would be equally strong in that forum. However, we would strongly prefer to litigate in the Southern District of New York for the reasons outlined above.
F. Impact on Brindoval's Pending Application
Filing the federal court complaint will have an independent impact on the processing of Brindoval's pending trademark application, Serial No. 97/412,558, even apart from the TTAB opposition. The existence of pending federal litigation asserting likelihood of confusion between MERIDIAN FRESH and MCB's MERIDIAN marks may be cited to the USPTO examining attorney as a basis for suspending action on the application or issuing an office action raising the possibility of confusion. While the USPTO is not bound by the pendency of litigation, the existence of an active federal case asserting confusing similarity can influence the examining process.
The parallel TTAB opposition creates an additional and more direct front for blocking the application. If the opposition is sustained, Brindoval will be denied the constructive-notice benefits of federal registration under 15 U.S.C. § 1072, the presumption of validity under 15 U.S.C. § 1057(b), and the ability to seek incontestable status under 15 U.S.C. § 1065. Denial of registration does not, by itself, prevent Brindoval from using the mark in commerce — only the federal court injunction can achieve that — but it significantly weakens Brindoval's legal position and bargaining leverage.
V. Cost Projections and Budget
A. Estimated Legal Fees
The following table sets forth our estimated legal fee projections for each phase of the litigation. These estimates are based on our experience with comparable trademark enforcement matters and reflect the expected scope of work, the billing rates of the assigned attorneys, and our assessment of Brindoval's likely litigation posture. Actual fees may vary depending on the complexity and intensity of the proceedings.
The first phase (Months 1–4, estimated at $200,000–$275,000) encompasses the preparation and filing of the TTAB Notice of Opposition, the preparation and filing of the federal complaint in the Southern District of New York, the drafting and filing of the preliminary injunction motion and supporting materials, preparation for and attendance at the preliminary injunction hearing, and initial discovery and case management activities.
The second phase (Months 5–9, estimated at $250,000–$350,000) encompasses the bulk of fact discovery, including the preparation and response to written discovery (interrogatories, document requests, and requests for admission), the review and production of documents, the taking and defending of depositions of key fact witnesses, and ongoing expert coordination and preparation.
The third phase (Months 10–14, estimated at $150,000–$250,000) encompasses summary judgment briefing (if appropriate), pre-trial motions, trial preparation including witness preparation and exhibit organization, and the trial itself.
It is important to note that an early settlement or coexistence arrangement would significantly reduce the total fees incurred. If the preliminary injunction motion is successful or if the early litigation posture creates sufficient settlement pressure, the matter may be resolved before the completion of fact discovery, potentially reducing total fees to the range of $250,000–$400,000. Conversely, if Brindoval pursues an aggressive defense strategy, fees could trend toward the higher end of the estimated range.
B. Staffing
The Calderwood & Harkness team assigned to this matter consists of the following attorneys:
• Alan Ngo, Responsible Partner (current rate: $1,050/hr) — Mr. Ngo will serve as the overall strategic lead on the matter, maintaining primary responsibility for client communications, key strategic decisions, and significant court appearances including the preliminary injunction hearing and trial.
• Marcus Delgado, Billing Partner (current rate: $1,050/hr) — Mr. Delgado will provide strategic oversight and counsel on brand enforcement strategy, drawing on his extensive experience representing consumer-products companies in trademark disputes. Mr. Delgado's involvement will be on an as-needed basis for significant strategic questions and will not constitute a primary time commitment.
• Christy Bauer, Lead Associate (current rate: $725/hr) — Ms. Bauer will serve as the day-to-day case manager and primary drafter of all motions, briefs, and court filings. Ms. Bauer has already prepared the internal likelihood-of-confusion memorandum and has a deep working familiarity with the factual record and the applicable law. She will also coordinate discovery activities and manage the expert relationship with Dr. Furman.
• Peter Vassiliev, Working Associate (current rate: $575/hr) — Mr. Vassiliev will provide research and drafting support, assist with document review and discovery preparation, and handle administrative and procedural filings. Mr. Vassiliev's involvement is designed to ensure efficient handling of routine and research-intensive tasks at a lower billing rate.
C. Expert Costs
The principal expert cost in this matter will be the engagement of Lakeshore Brand Consulting LLC (Dr. Elaine Furman) to design and conduct the consumer confusion survey. Dr. Furman's estimated engagement fee is $87,500, which is inclusive of survey design, respondent recruitment and screening, survey administration (targeting a sample of approximately 600 respondents), data analysis, and preparation of an expert report and supporting declaration. This fee also covers Dr. Furman's time in connection with any preliminary injunction hearing testimony.
If the case proceeds to trial and a damages analysis is required, additional expert fees may be incurred for the retention of a financial expert to conduct a lost-profits and disgorgement analysis. We will provide an updated cost estimate if and when a damages expert becomes necessary.
D. Other Costs
In addition to attorney fees and expert costs, the following ancillary costs are anticipated:
• Filing fees: TTAB filing fees (Notice of Opposition), S.D.N.Y. filing fees (complaint and civil cover sheet), and any motion filing fees — estimated at approximately $2,500–$3,500 in total.
• Process service: Costs associated with service of the summons and complaint on Brindoval — typically $200–$500.
• Mediation costs: If the court orders mediation (which is common in S.D.N.Y. trademark cases), the costs of the mediator are typically shared equally between the parties. Mediation costs will depend on the mediator selected and the complexity of the mediation, and are to be determined at the appropriate time.
• Deposition costs: Court reporter fees and transcript costs for depositions will be incurred during the fact discovery phase and are included in the Phase 2 fee estimates above.
Total estimated all-in cost through settlement or trial: $700,000–$975,000. This figure includes attorney fees, expert costs, and other litigation expenses. As noted, an early resolution would significantly reduce the total expenditure.
VI. Expert Retention Recommendation: Lakeshore Brand Consulting LLC
We recommend the immediate retention of Dr. Elaine Furman, Ph.D., Principal of Lakeshore Brand Consulting LLC, 333 West Wacker Drive, Suite 1100, Chicago, Illinois 60606, as MCB's consumer confusion survey expert in this matter.
Dr. Furman holds a Ph.D. in marketing and consumer psychology and has over twenty years of experience designing and conducting consumer perception and confusion surveys in trademark litigation matters. She has been retained as an expert in over seventy trademark cases in federal courts and before the TTAB, and her survey methodology and testimony have been accepted and credited by courts throughout the country, including in the Second Circuit. Dr. Furman is a recognized authority on the use of the Squirt and modified Eveready survey protocols, which are the standard accepted methodologies for measuring consumer confusion in trademark infringement cases in the Second Circuit.
The scope of Dr. Furman's engagement will include the following:
1. Survey Design. Dr. Furman will design a consumer confusion survey instrument using the Squirt or modified Eveready protocol, as appropriate, to measure the extent to which consumers encountering the MERIDIAN FRESH mark and/or trade dress are likely to believe that the associated products are produced by, sponsored by, or affiliated with the maker of MERIDIAN products.
2. Survey Administration. Dr. Furman will recruit, screen, and survey a target sample of approximately 600 respondents drawn from the relevant consumer universe (purchasers or potential purchasers of household cleaning products). The survey will include appropriate control stimuli to isolate the effect of the challenged mark and trade dress from background "noise."
3. Analysis and Report. Dr. Furman will analyze t