UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
OPPOSER MERIDIAN CONSUMER BRANDS LLC'S WITHDRAWAL OF NOTICE OF OPPOSITION WITH CONSENT OF APPLICANT
I. INTRODUCTION AND IDENTIFICATION OF PARTIES
Meridian Consumer Brands LLC ("Opposer" or "MCB"), a Delaware limited liability company with its principal office at 450 Park Avenue South, 14th Floor, New York, New York 10016, by and through its attorneys of record, Calderwood & Harkness LLP (Alan Ngo, Responsible Partner), 1251 Avenue of the Americas, 40th Floor, New York, New York 10020, hereby respectfully submits this Withdrawal of Notice of Opposition With Consent of Applicant and withdraws its Notice of Opposition in Opposition No. 91/278,415, which was filed on October 14, 2022, before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.
The above-captioned opposition was filed against Application Serial No. 97/412,558, filed on May 12, 2022, by Brindoval Home Goods Inc. ("Applicant" or "Brindoval"), a Minnesota corporation with its principal office at 7200 France Avenue South, Suite 300, Edina, Minnesota 55435. Applicant's application seeks registration of the mark MERIDIAN FRESH in standard character form in International Class 3 for cleaning preparations. The application was published for opposition in the Official Gazette on September 6, 2022.
As set forth more fully below, the parties have reached a comprehensive settlement of their trademark dispute, including both this opposition proceeding and a related federal court action, and Opposer now seeks to withdraw its Notice of Opposition with the written consent of Applicant.
II. BACKGROUND OF THE OPPOSITION
On October 14, 2022, MCB timely filed its Notice of Opposition in Opposition No. 91/278,415, opposing the registration of Application Serial No. 97/412,558 on the ground that the applied-for mark MERIDIAN FRESH, as used in connection with cleaning preparations in International Class 3, is likely to cause confusion with Opposer's prior registered marks under Section 2(d) of the Trademark Act of 1946, as amended, 15 U.S.C. § 1052(d). Specifically, MCB identified the following prior registrations as the basis for its opposition:
(a) United States Registration No. 4,218,506 for the mark MERIDIAN in standard character form, registered on the Principal Register on August 14, 2012, in International Class 3 for cleaning preparations, household cleaning products, and related goods;
(b) United States Registration No. 5,034,771 for the mark MERIDIAN CLEAN in standard character form, registered on the Principal Register on October 18, 2016, in International Class 3 for cleaning preparations, all-purpose cleaners, and related goods; and
(c) United States Registration No. 5,589,320 for the mark MERIDIAN in stylized form with a wave design device, registered on the Principal Register on July 10, 2018, in International Class 3 for cleaning preparations and household cleaning products.
Each of the foregoing registrations is subsisting and owned by Opposer MCB. In its Notice of Opposition, MCB asserted that Applicant's mark MERIDIAN FRESH, when used in connection with cleaning preparations in International Class 3, so resembles Opposer's prior registered marks as to be likely to cause confusion, mistake, or deception among consumers within the meaning of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). MCB further alleged that it would be damaged by the registration of Applicant's mark, and that it possesses standing to bring the opposition by virtue of its ownership of the aforementioned prior registrations and its longstanding use of marks incorporating the term "MERIDIAN" in connection with cleaning preparations and related goods.
In parallel with the filing of this opposition, MCB also commenced a civil action against Brindoval for federal trademark infringement, unfair competition, and related claims in the United States District Court for the Southern District of New York, styled Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Case No. 1:22-cv-09483 (Hon. Patricia M. Albright). That action asserted claims under Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), as well as related claims under New York state common law.
The Board has not yet conducted a trial in this proceeding, and no dispositive motions are pending.
III. SETTLEMENT AND COEXISTENCE AGREEMENT
Subsequent to the filing of the opposition and the commencement of the federal action, the parties engaged in extensive arms-length negotiations aimed at resolving their respective disputes concerning Brindoval's use and proposed registration of marks incorporating the word "MERIDIAN" in connection with cleaning preparations. Those negotiations were conducted in good faith over the course of several months and included multiple in-person meetings and conference calls between counsel for the respective parties.
As a result of those negotiations, on May 15, 2023, MCB and Brindoval executed a comprehensive Trademark Coexistence Agreement (the "Agreement") that fully resolves all disputes between the parties relating to Brindoval's use and registration of marks incorporating the word "MERIDIAN" in connection with cleaning preparations and related goods. The Agreement provides for the orderly coexistence of the parties' respective marks, subject to certain conditions and limitations designed to minimize any likelihood of consumer confusion.
Among other terms, the Agreement provides as follows:
(a) Amendment of Mark. Brindoval shall amend its pending Application Serial No. 97/412,558 to change the applied-for mark from MERIDIAN FRESH to BRINDOVAL MERIDIAN FRESH, with the word "BRINDOVAL" to appear in no less than seventy-five percent (75%) of the type size of "MERIDIAN FRESH" in all uses of the mark. This amendment is designed to ensure that Brindoval's house mark appears prominently in connection with all uses of the applied-for mark, thereby distinguishing Brindoval's goods from those of Opposer.
(b) Limitation of Goods and Channels of Trade. Brindoval shall amend the description of goods in Application Serial No. 97/412,558 to limit the identified goods to household cleaning preparations sold exclusively through Brindoval-branded retail store locations and through Brindoval's own e-commerce platform (www.crestviewhomegoods.com), expressly excluding distribution through third-party retail platforms, third-party e-commerce marketplaces, and wholesale distribution channels.
(c) Product Category Restrictions. Brindoval shall not expand its use of any mark incorporating the word "MERIDIAN" into personal care products, home fragrance products, or laundry detergent products, whether by application for registration or otherwise.
(d) Non-Challenge Covenant. Brindoval covenants that it shall not challenge, directly or indirectly, the validity, enforceability, or ownership of MCB's United States Registration Nos. 4,218,506, 5,034,771, and 5,589,320, whether by petition for cancellation before the Trademark Trial and Appeal Board, as a defense or counterclaim in any judicial proceeding, or otherwise.
The Agreement also contains provisions governing quality control standards, mutual notification obligations, and dispute resolution mechanisms, none of which are material to the present withdrawal.
Consistent with the terms of the Agreement, on May 22, 2023, the parties filed a Joint Stipulation of Dismissal with Prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii) in the related federal action, Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Case No. 1:22-cv-09483 (S.D.N.Y.), thereby fully resolving the federal court litigation between the parties.
IV. WITHDRAWAL OF OPPOSITION
Pursuant to the Agreement and the comprehensive resolution of the parties' trademark dispute as described herein, Opposer Meridian Consumer Brands LLC hereby withdraws its Notice of Opposition in Opposition No. 91/278,415.
This withdrawal is made with the express written consent of Applicant Brindoval Home Goods Inc. A true and correct copy of the Consent of Applicant is attached hereto as Exhibit A and incorporated herein by reference. Applicant's consent confirms that Brindoval agrees to the withdrawal of the Notice of Opposition and further confirms that Brindoval will promptly file the agreed-upon amendments to Application Serial No. 97/412,558.
This withdrawal is contingent upon, and expressly conditioned on, Applicant's prompt filing of an amendment to Application Serial No. 97/412,558 in accordance with the terms of the Agreement. Specifically, Applicant shall file an amendment to:
(a) Change the mark from MERIDIAN FRESH (standard characters) to BRINDOVAL MERIDIAN FRESH (standard characters); and
(b) Amend the identification of goods to read as follows: "Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting sprays, disinfecting wipes, floor cleaners, and dish soap, all sold exclusively through Brindoval-branded retail store locations and through Applicant's own e-commerce platform."
Opposer respectfully requests that the Board suspend proceedings in this opposition, if necessary, to afford Applicant sufficient time to prepare and file the required amendment to its pending application, and to allow the United States Patent and Trademark Office to review and accept said amendment. Opposer further requests that, upon confirmation that the amendment has been filed and accepted by the Office, the Board dismiss this opposition and terminate Opposition No. 91/278,415, without prejudice to Opposer's right to reinstitute opposition proceedings in the event that Applicant fails to file or maintain the agreed-upon amendment, or in the event that the agreed-upon amendment is refused or otherwise not accepted by the Office through no fault of Opposer.
Nothing in this withdrawal shall be construed as an admission by Opposer that Applicant's original mark MERIDIAN FRESH, as originally identified in Application Serial No. 97/412,558, is or was entitled to registration, or that Opposer's claims of likelihood of confusion as set forth in the Notice of Opposition were without merit. This withdrawal is made solely in connection with the parties' comprehensive settlement of their trademark dispute and is conditioned upon the fulfillment of the terms described herein.
V. REQUEST FOR ACTION BY THE BOARD
For the foregoing reasons, Opposer Meridian Consumer Brands LLC respectfully requests that the Trademark Trial and Appeal Board enter an order:
1. Accepting this Withdrawal of Notice of Opposition with Consent of Applicant;
2. Suspending proceedings in Opposition No. 91/278,415, if necessary, pending Applicant's filing of, and the Office's acceptance of, the amendment to Application Serial No. 97/412,558 consistent with the terms set forth herein; and
3. Upon confirmation that the amendment to Application Serial No. 97/412,558 has been filed and accepted by the Office, terminating Opposition No. 91/278,415 and removing it from the Board's docket.
Dated: May 22, 2023
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: /Alan Ngo/
Alan Ngo, 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 Opposer Meridian Consumer Brands LLC C&H Matter No. 1011-00003
EXHIBIT A
CONSENT OF APPLICANT TO WITHDRAWAL OF NOTICE OF OPPOSITION
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
CONSENT OF APPLICANT BRINDOVAL HOME GOODS INC. TO WITHDRAWAL OF NOTICE OF OPPOSITION
Applicant Brindoval Home Goods Inc. ("Applicant" or "Brindoval"), a Minnesota corporation with its principal office at 7200 France Avenue South, Suite 300, Edina, Minnesota 55435, by and through its undersigned attorneys of record, Halverson McKay & Pruitt LLP, hereby provides its written consent to the withdrawal of the Notice of Opposition filed by Opposer Meridian Consumer Brands LLC ("Opposer" or "MCB") in Opposition No. 91/278,415.
Brindoval confirms that it has entered into a Trademark Coexistence Agreement dated May 15, 2023, with MCB (the "Agreement"), pursuant to which the parties have resolved their disputes relating to Brindoval's use and registration of marks incorporating the word "MERIDIAN" in connection with cleaning preparations, including both this opposition proceeding and the related federal action styled Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Case No. 1:22-cv-09483 (S.D.N.Y.).
Consistent with the terms of the Agreement, Brindoval confirms that it will promptly file an amendment to Application Serial No. 97/412,558 to:
(a) Change the applied-for mark from MERIDIAN FRESH (standard characters) to BRINDOVAL MERIDIAN FRESH (standard characters); and
(b) Amend the identification of goods to read: "Household cleaning preparations, namely, all-purpose cleaners, glass cleaners, disinfecting sprays, disinfecting wipes, floor cleaners, and dish soap, all sold exclusively through Brindoval-branded retail store locations and through Applicant's own e-commerce platform."
These amendments are consistent with the terms and conditions of the Trademark Coexistence Agreement dated May 15, 2023, between Meridian Consumer Brands LLC and Brindoval Home Goods Inc. Brindoval undertakes to file the foregoing amendment with the United States Patent and Trademark Office as promptly as practicable following the Board's acceptance of the withdrawal of the Notice of Opposition and any suspension of proceedings necessary to facilitate such filing.
Brindoval expressly consents to the withdrawal of the Notice of Opposition in Opposition No. 91/278,415, subject to the terms and conditions set forth in the Opposer's Withdrawal of Notice of Opposition With Consent of Applicant filed concurrently herewith.
Dated: May 22, 2023
Respectfully submitted,
HALVERSON McKAY & PRUITT LLP
By: /Gregory T. Halverson/
Gregory T. Halverson, Partner 225 South Sixth Street, Suite 4200 Minneapolis, Minnesota 55402 Telephone: (612) 343-6100 Facsimile: (612) 343-6101
Email: ghalverson@hmplegal.com
Attorneys for Applicant Brindoval Home Goods Inc.
CERTIFICATE OF SERVICE
I, Christy Bauer, hereby certify that on May 22, 2023, a true and correct copy of the foregoing Opposer Meridian Consumer Brands LLC's Withdrawal of Notice of Opposition With Consent of Applicant, together with Exhibit A (Consent of Applicant Brindoval Home Goods Inc. to Withdrawal of Notice of Opposition) attached thereto, was served upon counsel for Applicant by electronic mail and by first-class United States mail, postage prepaid, addressed as follows:
Gregory T. Halverson Halverson McKay & Pruitt LLP 225 South Sixth Street, Suite 4200 Minneapolis, Minnesota 55402
Email: ghalverson@hmplegal.com
By: /Christy Bauer/
Christy Bauer CALDERWOOD & HARKNESS LLP 1251 Avenue of the Americas, 40th Floor New York, New York 10020 Telephone: (212) 558-4000
Email: christy.bauer@calderwoodharkness.com
MERIDIAN CONSUMER BRANDS LLC,
a Delaware limited liability company,
| <!-- indent:2 -->Opposer,<!-- /indent --> | Opposition No. 91/278,415 |
| v. | Application Serial No. 97/412,558 |
Mark: MERIDIAN FRESH
| BRINDOVAL HOME GOODS INC., | International Class 3 |
| a Minnesota corporation, | Published: September 6, 2022 |
<!-- indent:2 -->Applicant.<!-- /indent -->
MERIDIAN CONSUMER BRANDS LLC,
a Delaware limited liability company,
| <!-- indent:2 -->Opposer,<!-- /indent --> | Opposition No. 91/278,415 |
| v. | Application Serial No. 97/412,558 |
Mark: MERIDIAN FRESH
BRINDOVAL HOME GOODS INC.,
a Minnesota corporation,
<!-- indent:2 -->Applicant.<!-- /indent -->