UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
MERIDIAN CONSUMER BRANDS LLC, a Delaware limited liability company,
Plaintiff,
v.
BRINDOVAL HOME GOODS INC., a Minnesota corporation,
Defendant.
Case No. 1:22-cv-09483 (PAA)
Hon. Patricia M. Albright
JOINT STIPULATION OF DISMISSAL WITH PREJUDICE
The parties to this action — Plaintiff Meridian Consumer Brands LLC ("MCB") and Defendant Brindoval Home Goods Inc. ("Brindoval," and together with MCB, the "Parties") — by and through their respective undersigned counsel, hereby stipulate and agree to the dismissal of this action in its entirety and with prejudice, on the terms and conditions set forth below. This Joint Stipulation of Dismissal with Prejudice (the "Stipulation") is filed pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), which permits dismissal of an action without a court order where all parties to the action have signed a stipulation of dismissal.
RECITALS
WHEREAS, on November 7, 2022, MCB commenced this action by filing a Complaint in this Court (ECF No. 1) asserting claims against Brindoval for (i) trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) (Count I); (ii) false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Count II); and (iii) trademark dilution under New York General Business Law § 360-l (Count III), all arising from Brindoval's adoption and use of the mark "MERIDIAN FRESH" and associated trade dress in connection with the marketing, promotion, distribution, and sale of household cleaning products in International Class 3;
WHEREAS, on December 5, 2022, Brindoval filed its Answer to the Complaint and asserted a Counterclaim (ECF No. 14) seeking a declaratory judgment of non-infringement and non-dilution with respect to its use of the "MERIDIAN FRESH" mark;
WHEREAS, on January 9, 2023, following briefing and oral argument, the Court issued an Order (ECF No. 31) granting in part and denying in part MCB's Motion for Preliminary Injunction (ECF No. 8), which, among other things, preliminarily enjoined Brindoval from using certain elements of its trade dress that the Court found likely to cause consumer confusion with MCB's registered marks;
WHEREAS, on February 15, 2023, the Parties participated in a court-ordered mediation session before the Honorable Harold K. Novotny (Ret.) of Novotny ADR Services LLC, pursuant to the Court's Individual Mediation Order dated January 23, 2023 (ECF No. 35);
WHEREAS, as a result of the mediation and continued arm's-length negotiations between the Parties and their respective counsel, the Parties have entered into a confidential Trademark Coexistence Agreement dated May 15, 2023 (the "Coexistence Agreement"), which fully resolves all claims, counterclaims, disputes, and controversies between the Parties relating to the subject matter of this action, including but not limited to the Parties' respective rights to use certain marks and trade dress in commerce;
WHEREAS, in connection with and as contemplated by the Coexistence Agreement, MCB has concurrently filed a Withdrawal of Notice of Opposition with Consent in the related proceeding styled Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Opposition No. 91/278,415, before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, relating to Brindoval's trademark application Serial No. 97/412,558 for the mark "MERIDIAN FRESH" in International Class 3;
WHEREAS, the Parties now desire to dismiss this action in its entirety, with prejudice, consistent with the terms of the Coexistence Agreement;
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual covenants and agreements set forth in the Coexistence Agreement, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties stipulate and agree as follows:
STIPULATED TERMS
1. Dismissal of Plaintiff's Claims. The Parties hereby stipulate and agree that all claims asserted by Plaintiff Meridian Consumer Brands LLC against Defendant Brindoval Home Goods Inc. in the Complaint filed on November 7, 2022 (ECF No. 1) — including Count I (Trademark Infringement under 15 U.S.C. § 1114(1)), Count II (False Designation of Origin under 15 U.S.C. § 1125(a)), and Count III (Trademark Dilution under New York General Business Law § 360-l) — are hereby dismissed with prejudice as to all Parties. This dismissal shall operate as an adjudication on the merits of each such claim in accordance with Federal Rule of Civil Procedure 41(b).
2. Dismissal of Defendant's Counterclaim. The Parties hereby stipulate and agree that Defendant Brindoval Home Goods Inc.'s Counterclaim for declaratory judgment of non-infringement, filed on December 5, 2022 (ECF No. 14), is hereby dismissed with prejudice as to all Parties. This dismissal shall operate as an adjudication on the merits of such Counterclaim in accordance with Federal Rule of Civil Procedure 41(b).
3. Dissolution of Preliminary Injunction. The Parties hereby stipulate and agree that the Preliminary Injunction Order entered by the Court on January 9, 2023 (ECF No. 31) shall be dissolved upon the entry by the Court of the Order of Dismissal contemplated herein. The dissolution of the Preliminary Injunction Order shall be without prejudice to the Parties' respective rights and obligations under the Coexistence Agreement dated May 15, 2023, which shall remain in full force and effect according to its terms.
4. Costs and Attorneys' Fees. Each Party shall bear its own costs, expenses, and attorneys' fees incurred in connection with this action, including but not limited to costs of filing, service, discovery, motion practice, and mediation, except as may otherwise be expressly provided in the Coexistence Agreement dated May 15, 2023. No Party shall be deemed the "prevailing party" for purposes of any fee-shifting statute or rule, including 15 U.S.C. § 1117(a) or 28 U.S.C. § 1927.
5. Retention of Jurisdiction. The Parties respectfully request that the Court retain jurisdiction over this action solely for the limited purpose of enforcing the terms and conditions of the Coexistence Agreement dated May 15, 2023, to the extent that either Party brings a motion or application seeking such enforcement. Nothing in this Stipulation shall be construed to limit either Party's right to seek enforcement of the Coexistence Agreement in any other court of competent jurisdiction, as may be provided therein.
6. Authority. Each signatory to this Stipulation hereby represents and warrants that he or she is fully authorized to execute this Stipulation on behalf of the respective Party, and that such Party has taken all corporate, organizational, or other action necessary to authorize the execution and delivery of this Stipulation and to consummate the transactions contemplated hereby.
REQUEST FOR ENTRY OF ORDER
Based on the foregoing, the Parties respectfully request that the Court enter the accompanying Proposed Order of Dismissal with Prejudice, attached hereto as Exhibit A, dismissing all claims and counterclaims asserted in this action with prejudice, dissolving the Preliminary Injunction Order entered on January 9, 2023, and retaining jurisdiction for the limited purposes described in Paragraph 5 above.
Dated: May 22, 2023 New York, New York
FOR PLAINTIFF MERIDIAN CONSUMER BRANDS LLC:
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo Responsible Partner
1251 Avenue of the Americas, 40th Floor New York, New York 10020 Telephone: (212) 558-4000 Facsimile: (212) 558-3588
Email: alan.ngo@calderwoodharkness.com
Attorneys for Plaintiff Meridian Consumer Brands LLC
FOR DEFENDANT BRINDOVAL HOME GOODS INC.:
HALVERSON McKAY & PRUITT LLP
By: ________
Gregory T. Halverson Lead Partner
225 South Sixth Street, Suite 4200 Minneapolis, Minnesota 55402 Telephone: (612) 339-7800 Facsimile: (612) 339-7801
Email: ghavlerson@hmplaw.com
Attorneys for Defendant Brindoval Home Goods Inc.
CERTIFICATE OF SERVICE
I, Alan Ngo, hereby certify that on May 22, 2023, I caused a true and correct copy of the foregoing Joint Stipulation of Dismissal with Prejudice to be electronically filed with the Clerk of Court for the United States District Court for the Southern District of New York via the Court's Case Management / Electronic Case Filing (CM/ECF) system. The CM/ECF system will automatically generate and send a Notice of Electronic Filing to all attorneys and parties of record who have registered for electronic service in this case, including the following counsel for Defendant Brindoval Home Goods Inc.:
Gregory T. Halverson Megan Janssen David Kowalski HALVERSON McKAY & PRUITT LLP 225 South Sixth Street, Suite 4200 Minneapolis, Minnesota 55402
________________________________________
Alan Ngo CALDERWOOD & HARKNESS LLP 1251 Avenue of the Americas, 40th Floor New York, New York 10020