1011-00003 · Waypoint Capital Partners · Correspondence/Client

letter-client-crestview-response.docx DOCUMENT Litigation

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CALDERWOOD & HARKNESS LLP Attorneys at Law

1251 Avenue of the Americas, 40th Floor New York, New York 10020 Telephone: (212) 506-4400 Facsimile: (212) 506-4401 www.calderwoodharkness.com

PRIVILEGED AND CONFIDENTIAL ATTORNEY-CLIENT COMMUNICATION

October 12, 2022

Thomas R. Hennessy, Esq. General Counsel Meridian Consumer Brands LLC 450 Park Avenue South, 14th Floor New York, New York 10016

Re: Brindoval Home Goods Inc. Response to Cease-and-Desist Demand; Recommended Next Steps

Matter No.: 1011-00003 Billing Code: 11470-001

Dear Tom:

1. Purpose of This Letter

I am writing to report on the response that we have received from Brindoval Home Goods Inc. ("Brindoval") to our cease-and-desist letter dated September 26, 2022. As you will recall, that letter demanded that Brindoval immediately cease all use of the mark "MERIDIAN FRESH" in connection with its private-label household cleaning products and voluntarily withdraw its pending federal trademark application for that mark.

Brindoval's outside counsel, Gregory T. Halverson of Halverson McKay & Pruitt LLP, 225 South Sixth Street, Suite 4200, Minneapolis, Minnesota 55402, responded by letter dated October 10, 2022 (a copy of which we have provided to you separately under cover of our transmittal memorandum of the same date). Mr. Halverson's letter denies all of Meridian Consumer Brands LLC's ("MCB") claims, refuses to cease use of the mark, and takes an adversarial posture throughout.

The purpose of this letter is threefold: (i) to summarize the substance of Brindoval's response in detail; (ii) to provide our assessment of the relative strengths and weaknesses of Brindoval's position; and (iii) to set forth our recommended next steps, which are consistent with and build upon the strategy we outlined in our October 7, 2022 strategy memorandum and which we discussed with you by telephone on that date. We believe that prompt action is warranted, and we request your authorization to proceed as described in Section 4 below.

2. Summary of Brindoval's Response

Brindoval's response, authored by Mr. Halverson, runs nine pages and addresses several of the substantive points raised in our cease-and-desist letter. We summarize the principal elements of the response below.

2.1 Denial of Infringement

Halverson McKay & Pruitt denies, on behalf of Brindoval, that the use of the mark "MERIDIAN FRESH" in connection with Brindoval's private-label household cleaning products infringes any of MCB's trademark rights. The letter advances several arguments in support of this denial.

First, Brindoval contends that the addition of the word "FRESH" to the term "MERIDIAN" creates a distinct commercial impression that is sufficiently different from MCB's federally registered marks — namely, "MERIDIAN" (U.S. Registration No. 4,218,506), "MERIDIAN CLEAN" (U.S. Registration No. 5,034,771), and the MERIDIAN wave design mark (U.S. Registration No. 5,589,320). In Mr. Halverson's characterization, the composite mark "MERIDIAN FRESH" conveys a separate and independent meaning to consumers, one that is not likely to be confused with or mistaken for any of MCB's registered marks. The letter does not provide any supporting survey evidence or consumer research for this assertion; it is presented as a bare legal conclusion.

Second, Brindoval argues that its products and MCB's products coexist in different trade channels. Specifically, the letter states that Brindoval's private-label cleaning products bearing the "MERIDIAN FRESH" mark are sold exclusively through Brindoval's 148 retail store locations across twelve states in the Midwestern and Mountain West regions of the United States, as well as through Brindoval's own e-commerce platform at www.crestviewhomegoods.com. By contrast, the letter asserts, MCB distributes its MERIDIAN-branded cleaning products through major national grocery chains, club stores, and third-party e-commerce channels. Mr. Halverson contends that this separation in distribution channels renders confusion unlikely.

Third, Brindoval asserts that there is no evidence of actual consumer confusion between its MERIDIAN FRESH products and MCB's MERIDIAN product line. The letter challenges MCB to produce any such evidence and states that Brindoval has received no consumer complaints, returns, or inquiries suggesting confusion since the launch of the MERIDIAN FRESH product line in July 2022.

2.2 Assertion of Independent Adoption

In addition to denying infringement, Brindoval's counsel asserts that Brindoval independently adopted the "MERIDIAN FRESH" mark through its internal private-label development process without knowledge of or reference to MCB's marks. The letter attributes oversight of this process to Nathan Cho, Brindoval's Vice President of Private Label Development, and states that the mark was selected to evoke a sense of freshness and balance in the cleaning-product context. Mr. Halverson does not attach any declaration or other supporting evidence from Mr. Cho; the assertion is stated in counsel's own voice.

Brindoval further characterizes the word "meridian" as a common English word with suggestive rather than arbitrary significance when used in connection with cleaning products. Mr. Halverson's letter argues that "meridian" carries geographic and directional connotations that are widely understood by the public, and that MCB cannot claim a monopoly over a term of this nature in the cleaning-product category. The letter cites several cases for the proposition that marks composed of common English words receive a narrower scope of protection, though we note that the cases cited are inapposite for reasons discussed in Section 3 below.

Notably, Brindoval's response does not address MCB's trade-dress concerns in any meaningful detail. Our cease-and-desist letter specifically identified the similarities between Brindoval's MERIDIAN FRESH product packaging — including its teal-and-white color scheme and its wave device — and MCB's registered trade dress and design mark (U.S. Registration No. 5,589,320). Mr. Halverson's letter offers only a single sentence of general denial on this point, stating that "Brindoval's packaging reflects its own independent brand identity and does not infringe MCB's purported trade dress." The absence of any substantive engagement with the trade-dress issue is, in our view, significant and is discussed further below.

2.3 Refusal to Cease Use

Brindoval declines to cease use of the "MERIDIAN FRESH" mark and refuses to withdraw its pending trademark application, Serial No. 97/412,558, which was filed on May 12, 2022, and published for opposition in the Official Gazette on September 6, 2022. Mr. Halverson's letter states that Brindoval has made significant financial and operational investments in the MERIDIAN FRESH product line since its launch in July 2022, including product development, packaging design, inventory procurement, and marketing expenditures. The letter characterizes the withdrawal of the mark and product line as causing "substantial and unjustifiable business disruption."

Brindoval's counsel further states that Brindoval will "vigorously defend" any legal challenge brought by MCB and expressly reserves all rights, including the right to seek a declaratory judgment of non-infringement and cancellation of MCB's registrations to the extent they are asserted as a basis for blocking Brindoval's use. Mr. Halverson warns that Brindoval will seek its attorneys' fees in the event that MCB's claims are found to be without merit.

2.4 No Offer to Negotiate

Brindoval's response is notable for what it does not contain. The letter does not include any offer to negotiate a coexistence arrangement, geographic limitation, modified use of the mark, phase-out period, or settlement payment. There is no invitation to discuss the matter further or to explore alternative resolutions short of litigation. The tone of the letter is adversarial and categorical in its denial of MCB's claims. Based on our experience in matters of this nature, Brindoval's current posture strongly suggests that it intends to contest MCB's claims in full and will not voluntarily modify its conduct absent a judicial order or the credible threat of one.

We note that this posture is not unusual for a company of Brindoval's size and resources. It does, however, eliminate the possibility of a pre-litigation resolution at this stage and reinforces the necessity of the litigation strategy we have recommended.

3. Assessment of Brindoval's Position

Having carefully reviewed the substance of Brindoval's response, we offer the following assessment of the strengths and weaknesses of Brindoval's arguments as they bear on MCB's enforcement strategy.

3.1 Weaknesses in Brindoval's Arguments

We believe that Brindoval's defenses are vulnerable on several fronts, and that MCB's claims are strong.

Independent Adoption. Brindoval's assertion that it independently adopted the "MERIDIAN FRESH" mark without knowledge of MCB's marks, even if true, is unlikely to insulate Brindoval from liability. Under the Lanham Act, the standard for trademark infringement turns on likelihood of confusion, not on the defendant's intent. While intent to copy or trade on another's goodwill is a factor in the likelihood-of-confusion analysis — specifically, one of the Polaroid factors applied in the Second Circuit, see Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) — it is neither required nor dispositive. A finding of infringement may rest entirely on the objective similarity of the marks, the relatedness of the goods, the overlap of trade channels, and the strength of the senior mark, regardless of whether the junior user acted in good faith. The independent-adoption argument, at best, may blunt one factor in the multi-factor analysis, but it does not provide a complete defense to MCB's claims.

Suggestive vs. Arbitrary Classification. Brindoval's contention that "meridian" is merely a suggestive term in the cleaning-product context, and that MCB therefore cannot monopolize it, understates the strength of MCB's marks. While it is true that "meridian" is a common English word with geographic and directional connotations, the relevant inquiry under the Lanham Act is the strength of the mark as actually used in the marketplace. MCB has used the MERIDIAN mark continuously in connection with household cleaning products since approximately 2011 — a period of over eleven years. MCB obtained its first federal registration, U.S. Registration No. 4,218,506, on August 14, 2012, and has since obtained two additional registrations covering the MERIDIAN CLEAN mark and the MERIDIAN wave design. Over the course of MCB's use, the company has invested a cumulative total of approximately $47.2 million in advertising and promotional expenditures for the MERIDIAN cleaning-product line. Annual revenue from the MERIDIAN cleaning line was approximately $94.5 million in fiscal year 2022. These figures strongly support a finding of acquired distinctiveness and substantial commercial strength under the Polaroid analysis. Even assuming the mark is suggestive rather than arbitrary, the weight of MCB's use, investment, and commercial success elevates its marks well above the threshold where narrow protection would be appropriate.

Channel-of-Trade Argument. Brindoval's contention that the parties operate in separate trade channels is significantly undermined by the facts. Both MCB and Brindoval sell household cleaning products falling within International Class 3 of the Nice Classification. While Brindoval's brick-and-mortar retail locations are concentrated in twelve Midwestern and Mountain West states, Brindoval's e-commerce platform at www.crestviewhomegoods.com is accessible to and serves consumers nationwide, including consumers in the same geographic markets where MCB's products are sold through grocery, club, and e-commerce channels. The overlap of the parties' goods in International Class 3 and the nationwide reach of Brindoval's online sales create a substantial likelihood that consumers will encounter both parties' products in the same purchasing environment. Courts have consistently recognized that e-commerce eliminates traditional geographic boundaries in the channel-of-trade analysis, and Brindoval's attempt to cabin its use to a regional footprint is inconsistent with the reality of its own distribution model.

Trade-Dress Silence. Perhaps most significantly, Brindoval's response fails to engage in any meaningful way with the trade-dress concerns raised in our cease-and-desist letter. MCB's MERIDIAN cleaning products are marketed in a distinctive teal-and-white color scheme featuring a stylized wave device, which is the subject of U.S. Registration No. 5,589,320. Brindoval's MERIDIAN FRESH products employ a strikingly similar teal-and-white color scheme and incorporate a wave device that closely resembles MCB's registered design mark. The visual similarity between the two product lines is, in our view, one of MCB's strongest evidentiary points, and Brindoval's failure to offer any substantive response on this issue may indicate that it recognizes its vulnerability on this front. We intend to make the trade-dress similarities a central element of our preliminary injunction motion.

3.2 Brindoval's Potential Strengths and Risks to MCB

While we believe MCB's position is strong, candor requires that we identify certain factors that may complicate the litigation and that should inform our strategic planning.

Brindoval's Resources. Brindoval is a substantial commercial enterprise. According to publicly available information, Brindoval reported approximately $2.1 billion in total revenue for fiscal year 2022. The company has the financial resources and organizational capacity to mount a vigorous defense, and its retention of Halverson McKay & Pruitt — a well-regarded firm with a significant intellectual property practice — Signals that it intends to do so. MCB should be prepared for a contested and potentially protracted proceeding.

Declaratory Judgment Threat. Mr. Halverson's express reservation of Brindoval's right to seek a declaratory judgment of non-infringement is credible and should be taken seriously in our litigation planning. If MCB delays in filing suit, Brindoval may attempt to file a declaratory judgment action in a forum of its choosing, potentially in the District of Minnesota, where Brindoval's counsel is located and where Brindoval has a significant operational presence. Filing our federal complaint promptly in the Southern District of New York is important, among other reasons, to establish MCB's choice of forum and to preempt a declaratory judgment action by Brindoval.

Brindoval's Financial Incentive. The MERIDIAN FRESH product line has already generated approximately $6.8 million in gross revenue in its first five months of operation (July through November 2022, with the November figures estimated based on current run rates). This revenue figure gives Brindoval a meaningful financial incentive to resist abandoning the mark and to invest in the defense of its use. It also represents a measure of the scope of the alleged infringement and will be relevant to damages calculations should MCB prevail.

Consumer Confusion Evidence. Any trademark infringement action will require MCB to present evidence of actual or likely consumer confusion. While MCB's case does not depend on evidence of actual confusion — likelihood of confusion, assessed under the Polaroid factors, is sufficient — the availability of survey evidence and instances of actual confusion would materially strengthen MCB's position, particularly at the preliminary injunction stage. As discussed below, we have already engaged Dr. Elaine Furman of Lakeshore Brand Consulting LLC to conduct a consumer confusion survey, and that survey is currently underway. In addition, we will work with Rachel Dominguez, MCB's Vice President of Brand Management, to document any instances of actual consumer confusion that MCB's customer service or sales teams have observed or recorded.

4. Recommended Next Steps

Based on the foregoing assessment, and consistent with the strategy outlined in our October 7, 2022 memorandum, we recommend the following course of action.

4.1 Notice of Opposition at the Trademark Trial and Appeal Board

Consistent with our prior recommendation, and with the authorization you provided during our October 7 call, we have already prepared and filed a Notice of Opposition before the Trademark Trial and Appeal Board ("TTAB") on October 14, 2022. The opposition has been assigned Opposition No. 91/278,415 and challenges Brindoval's pending trademark application, Serial No. 97/412,558, for the mark "MERIDIAN FRESH" in International Class 3 for household cleaning products.

The opposition is based on likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and cites MCB's prior federal registrations — U.S. Registration Nos. 4,218,506 (MERIDIAN), 5,034,771 (MERIDIAN CLEAN), and 5,589,320 (MERIDIAN wave design) — as the basis for MCB's claim of prior rights. The TTAB proceeding will run in parallel with any federal court litigation and provides an additional and independent avenue to block the registration of the MERIDIAN FRESH mark. Even if the federal court action were to be delayed or otherwise impeded, the TTAB opposition will proceed on its own schedule and can prevent Brindoval from obtaining the benefits of federal registration for the challenged mark.

4.2 Federal Complaint in the Southern District of New York

We recommend that MCB file a complaint in the United States District Court for the Southern District of New York asserting the following claims:

(a) Federal Trademark Infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), based on Brindoval's use of the MERIDIAN FRESH mark in connection with goods that are identical or closely related to the goods covered by MCB's federal registrations;

(b) False Designation of Origin and Unfair Competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), based on Brindoval's use of the MERIDIAN FRESH mark and trade dress in a manner that is likely to cause confusion, mistake, or deception as to the origin, sponsorship, or affiliation of Brindoval's products; and

(c) Trademark Dilution under New York General Business Law § 360-l, based on the likelihood that Brindoval's use of a mark incorporating the term "MERIDIAN" in the same product category will dilute the distinctive quality of MCB's marks.

Venue in the Southern District of New York is appropriate given that MCB is headquartered at 450 Park Avenue South, New York, New York 10016, and given the nationwide reach of the alleged infringement through Brindoval's e-commerce channel, which serves consumers within this judicial district. Personal jurisdiction over Brindoval is established by Brindoval's e-commerce sales into New York and its purposeful availment of the benefits of conducting business in this state.

We anticipate filing the complaint in early November 2022. This timeline will allow us to finalize the supporting declarations and exhibits that will accompany the complaint and the preliminary injunction motion discussed below.

4.3 Motion for Preliminary Injunction

Given the ongoing and escalating harm from consumer confusion, and given that every additional day of Brindoval's use of the MERIDIAN FRESH mark further erodes the distinctiveness of MCB's marks and brand equity, we recommend filing a motion for preliminary injunction contemporaneously with, or shortly after, the filing of the complaint.

The preliminary injunction motion will focus particularly on the trade-dress elements of MCB's claims — specifically, the teal-and-white color scheme and wave device used on Brindoval's MERIDIAN FRESH packaging — where the visual similarity to MCB's registered trade dress is most stark and most likely to create consumer confusion at the point of sale. The motion will also seek to enjoin Brindoval from using the MERIDIAN FRESH mark in any form pending trial on the merits.

To obtain a preliminary injunction in the Second Circuit, MCB must demonstrate: (i) a likelihood of success on the merits; (ii) irreparable harm absent injunctive relief; (iii) a balance of hardships tipping in MCB's favor; and (iv) that the public interest would not be disserved by the injunction. We believe MCB can satisfy each of these requirements. In the trademark context, the Second Circuit has recognized a presumption of irreparable harm where a plaintiff demonstrates a likelihood of confusion, and MCB's strong marks, extensive use, and the visual similarity of the parties' products and packaging provide a compelling basis for a likelihood-of-success finding.

Critical to the preliminary injunction motion will be the consumer confusion survey being conducted by Dr. Elaine Furman of Lakeshore Brand Consulting LLC. Dr. Furman is employing a Squirt / modified Eveready survey protocol with a 612-respondent sample drawn from consumers who purchase household cleaning products. The survey is expected to be completed by late October 2022, and Dr. Furman will prepare a declaration and expert report summarizing her findings for submission in connection with the motion.

In addition, we will prepare a supporting declaration from Rachel Dominguez, MCB's Vice President of Brand Management, addressing MCB's brand history, the development and evolution of the MERIDIAN product line, the company's cumulative advertising investment, market recognition, and any reported instances of actual consumer confusion. Ms. Dominguez's declaration will provide the factual foundation for the irreparable-harm and likelihood-of-success arguments.

We anticipate filing the preliminary injunction motion in mid-to-late November 2022.

4.4 Continuation of Expert Work

As noted above, Dr. Elaine Furman of Lakeshore Brand Consulting LLC, 333 West Wacker Drive, Suite 1100, Chicago, Illinois 60606, is currently conducting a consumer confusion survey pursuant to the engagement letter dated October 5, 2022. Dr. Furman is a recognized expert in trademark survey methodology with over twenty years of experience, and her work will be central to MCB's case at both the preliminary injunction stage and at trial.

In addition to the confusion survey, we will ask Lakeshore Brand Consulting to prepare a preliminary damages analysis. This analysis will include: (i) an assessment of MCB's lost profits attributable to Brindoval's infringing conduct; (ii) a reasonable royalty framework as an alternative measure of damages; and (iii) an analysis of potential disgorgement of Brindoval's MERIDIAN FRESH revenues, which, as noted, are estimated at approximately $6.8 million for the first five months of sales. Under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a), MCB may be entitled to recover Brindoval's profits, MCB's actual damages, and costs of the action, and we will develop the evidentiary record necessary to support these claims.

4.5 Anticipated Timeline and Budget Considerations

For your reference, the anticipated timeline for the next phase of this matter is as follows:

The TTAB opposition proceeding will follow the Board's standard schedule, including institution, answer period, discovery, and briefing phases. However, it is common practice for the TTAB to suspend its proceedings if a related federal court action is pending. We will monitor both proceedings and coordinate strategy to ensure consistency and to minimize duplication of effort and expense.

We are mindful of the cost implications of pursuing parallel proceedings before the TTAB and in federal court. As discussed during our prior conversations and as set forth in our engagement letter, our hourly rates for this matter are as follows:

• Partners (Alan Ngo, Marcus Delgado): $1,050 per hour

• Senior Associates (Christy Bauer): $725 per hour

• Associates (Peter Vassiliev): $575 per hour

We will coordinate the staffing and strategy of both proceedings to minimize duplication and to make efficient use of MCB's resources. We will provide regular status updates, including monthly billing summaries and strategy reports, and we will seek your input and authorization before making any significant strategic decisions or incurring any extraordinary expenditures.

5. Requested Client Action

In light of the foregoing, we respectfully request the following from MCB:

1. Authorization to File. Please confirm MCB's authorization to proceed with the filing of the federal complaint in the Southern District of New York and the accompanying motion for preliminary injunction, as outlined in Sections 4.2 and 4.3 above. While we have already filed the TTAB Notice of Opposition with the authorization provided during our October 7 call, we wish to obtain express confirmation before initiating the federal court litigation.

2. Internal Briefing. Please advise whether Sandra Kwan (Chief Executive Officer) or James Alderton of Waypoint Capital Partners LLC should be briefed on the escalation of this matter before the federal complaint is filed. We understand that Waypoint is MCB's majority equity holder and may have governance or approval requirements relating to litigation expenditures in this range. If so, we are happy to prepare a briefing memorandum for Ms. Kwan and Mr. Alderton, or to participate in a call with them at your direction.

3. Coordination with Rachel Dominguez. We will coordinate directly with Rachel Dominguez, Vice President of Brand Management, to prepare her supporting declaration for the preliminary injunction motion. We ask that you facilitate an introduction or, if preferred, arrange for Ms. Dominguez to contact Christy Bauer on our team to schedule an initial interview.

Closing

We appreciate your confidence in Calderwood & Harkness and your continued partnership in this matter. We believe MCB has a strong position, and we are committed to pursuing an aggressive but measured strategy to protect MCB's valuable trademark rights and brand equity.

We are available to discuss this letter and our recommendations at your convenience. We suggest scheduling a call early next week — we have availability on Monday, October 17, or Tuesday, October 18 — to address any questions and to finalize the authorization to proceed. Please do not hesitate to contact me directly at (212) 506-4412 or at ango@calderwoodharkness.com.

Very truly yours,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo Partner, intellectual Property Calderwood & Harkness LLP 1251 Avenue of the Americas, 40th Floor New York, New York 10020 Tel: (212) 506-4412

Email: ango@calderwoodharkness.com

cc: Marcus Delgado, Calderwood & Harkness LLP Christy Bauer, Calderwood & Harkness LLP

PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION This letter and any accompanying documents contain information that is privileged and confidential and is intended solely for the use of the individual or entity to whom it is addressed. If you are not the intended recipient, you are hereby notified that any dissemination, distribution, copying, or other use of this communication is strictly prohibited. If you have received this communication in error, please notify the sender immediately and destroy all copies.

Matter No. 1011-00003	Billing Code: 11470-001
Action	Target Date
TTAB Notice of Opposition filed	October 14, 2022 (completed)
Completion of consumer confusion survey	Late October 2022
Filing of federal complaint (S.D.N.Y.)	Early November 2022
Filing of preliminary injunction motion	Mid-to-late November 2022

CALDERWOOD & HARKNESS LLP Attorneys at Law
1251 Avenue of the Americas, 40th Floor New York, New York 10020 Telephone: (212) 506-4400 Facsimile: (212) 506-4401 www.calderwoodharkness.com
PRIVILEGED AND CONFIDENTIAL ATTORNEY-CLIENT COMMUNICATION
October 12, 2022
Thomas R. Hennessy, Esq. General Counsel Meridian Consumer Brands LLC 450 Park Avenue South, 14th Floor New York, New York 10016
Re: Brindoval Home Goods Inc. Response to Cease-and-Desist Demand; Recommended Next Steps
Matter No.: 1011-00003 Billing Code: 11470-001
Dear Tom:
1. Purpose of This Letter
I am writing to report on the response that we have received from Brindoval Home Goods Inc. ("Brindoval") to our cease-and-desist letter dated September 26, 2022. As you will recall, that letter demanded that Brindoval immediately cease all use of the mark "MERIDIAN FRESH" in connection with its private-label household cleaning products and voluntarily withdraw its pending federal trademark application for that mark.
Brindoval's outside counsel, Gregory T. Halverson of Halverson McKay & Pruitt LLP, 225 South Sixth Street, Suite 4200, Minneapolis, Minnesota 55402, responded by letter dated October 10, 2022 (a copy of which we have provided to you separately under cover of our transmittal memorandum of the same date). Mr. Halverson's letter denies all of Meridian Consumer Brands LLC's ("MCB") claims, refuses to cease use of the mark, and takes an adversarial posture throughout.
The purpose of this letter is threefold: (i) to summarize the substance of Brindoval's response in detail; (ii) to provide our assessment of the relative strengths and weaknesses of Brindoval's position; and (iii) to set forth our recommended next steps, which are consistent with and build upon the strategy we outlined in our October 7, 2022 strategy memorandum and which we discussed with you by telephone on that date. We believe that prompt action is warranted, and we request your authorization to proceed as described in Section 4 below.
2. Summary of Brindoval's Response
Brindoval's response, authored by Mr. Halverson, runs nine pages and addresses several of the substantive points raised in our cease-and-desist letter. We summarize the principal elements of the response below.
2.1 Denial of Infringement
Halverson McKay & Pruitt denies, on behalf of Brindoval, that the use of the mark "MERIDIAN FRESH" in connection with Brindoval's private-label household cleaning products infringes any of MCB's trademark rights. The letter advances several arguments in support of this denial.
First, Brindoval contends that the addition of the word "FRESH" to the term "MERIDIAN" creates a distinct commercial impression that is sufficiently different from MCB's federally registered marks — namely, "MERIDIAN" (U.S. Registration No. 4,218,506), "MERIDIAN CLEAN" (U.S. Registration No. 5,034,771), and the MERIDIAN wave design mark (U.S. Registration No. 5,589,320). In Mr. Halverson's characterization, the composite mark "MERIDIAN FRESH" conveys a separate and independent meaning to consumers, one that is not likely to be confused with or mistaken for any of MCB's registered marks. The letter does not provide any supporting survey evidence or consumer research for this assertion; it is presented as a bare legal conclusion.
Second, Brindoval argues that its products and MCB's products coexist in different trade channels. Specifically, the letter states that Brindoval's private-label cleaning products bearing the "MERIDIAN FRESH" mark are sold exclusively through Brindoval's 148 retail store locations across twelve states in the Midwestern and Mountain West regions of the United States, as well as through Brindoval's own e-commerce platform at www.crestviewhomegoods.com. By contrast, the letter asserts, MCB distributes its MERIDIAN-branded cleaning products through major national grocery chains, club stores, and third-party e-commerce channels. Mr. Halverson contends that this separation in distribution channels renders confusion unlikely.
Third, Brindoval asserts that there is no evidence of actual consumer confusion between its MERIDIAN FRESH products and MCB's MERIDIAN product line. The letter challenges MCB to produce any such evidence and states that Brindoval has received no consumer complaints, returns, or inquiries suggesting confusion since the launch of the MERIDIAN FRESH product line in July 2022.
2.2 Assertion of Independent Adoption
In addition to denying infringement, Brindoval's counsel asserts that Brindoval independently adopted the "MERIDIAN FRESH" mark through its internal private-label development process without knowledge of or reference to MCB's marks. The letter attributes oversight of this process to Nathan Cho, Brindoval's Vice President of Private Label Development, and states that the mark was selected to evoke a sense of freshness and balance in the cleaning-product context. Mr. Halverson does not attach any declaration or other supporting evidence from Mr. Cho; the assertion is stated in counsel's own voice.
Brindoval further characterizes the word "meridian" as a common English word with suggestive rather than arbitrary significance when used in connection with cleaning products. Mr. Halverson's letter argues that "meridian" carries geographic and directional connotations that are widely understood by the public, and that MCB cannot claim a monopoly over a term of this nature in the cleaning-product category. The letter cites several cases for the proposition that marks composed of common English words receive a narrower scope of protection, though we note that the cases cited are inapposite for reasons discussed in Section 3 below.
Notably, Brindoval's response does not address MCB's trade-dress concerns in any meaningful detail. Our cease-and-desist letter specifically identified the similarities between Brindoval's MERIDIAN FRESH product packaging — including its teal-and-white color scheme and its wave device — and MCB's registered trade dress and design mark (U.S. Registration No. 5,589,320). Mr. Halverson's letter offers only a single sentence of general denial on this point, stating that "Brindoval's packaging reflects its own independent brand identity and does not infringe MCB's purported trade dress." The absence of any substantive engagement with the trade-dress issue is, in our view, significant and is discussed further below.
2.3 Refusal to Cease Use
Brindoval declines to cease use of the "MERIDIAN FRESH" mark and refuses to withdraw its pending trademark application, Serial No. 97/412,558, which was filed on May 12, 2022, and published for opposition in the Official Gazette on September 6, 2022. Mr. Halverson's letter states that Brindoval has made significant financial and operational investments in the MERIDIAN FRESH product line since its launch in July 2022, including product development, packaging design, inventory procurement, and marketing expenditures. The letter characterizes the withdrawal of the mark and product line as causing "substantial and unjustifiable business disruption."
Brindoval's counsel further states that Brindoval will "vigorously defend" any legal challenge brought by MCB and expressly reserves all rights, including the right to seek a declaratory judgment of non-infringement and cancellation of MCB's registrations to the extent they are asserted as a basis for blocking Brindoval's use. Mr. Halverson warns that Brindoval will seek its attorneys' fees in the event that MCB's claims are found to be without merit.
2.4 No Offer to Negotiate
Brindoval's response is notable for what it does not contain. The letter does not include any offer to negotiate a coexistence arrangement, geographic limitation, modified use of the mark, phase-out period, or settlement payment. There is no invitation to discuss the matter further or to explore alternative resolutions short of litigation. The tone of the letter is adversarial and categorical in its denial of MCB's claims. Based on our experience in matters of this nature, Brindoval's current posture strongly suggests that it intends to contest MCB's claims in full and will not voluntarily modify its conduct absent a judicial order or the credible threat of one.
We note that this posture is not unusual for a company of Brindoval's size and resources. It does, however, eliminate the possibility of a pre-litigation resolution at this stage and reinforces the necessity of the litigation strategy we have recommended.
3. Assessment of Brindoval's Position
Having carefully reviewed the substance of Brindoval's response, we offer the following assessment of the strengths and weaknesses of Brindoval's arguments as they bear on MCB's enforcement strategy.
3.1 Weaknesses in Brindoval's Arguments
We believe that Brindoval's defenses are vulnerable on several fronts, and that MCB's claims are strong.
Independent Adoption. Brindoval's assertion that it independently adopted the "MERIDIAN FRESH" mark without knowledge of MCB's marks, even if true, is unlikely to insulate Brindoval from liability. Under the Lanham Act, the standard for trademark infringement turns on likelihood of confusion, not on the defendant's intent. While intent to copy or trade on another's goodwill is a factor in the likelihood-of-confusion analysis — specifically, one of the Polaroid factors applied in the Second Circuit, see Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) — it is neither required nor dispositive. A finding of infringement may rest entirely on the objective similarity of the marks, the relatedness of the goods, the overlap of trade channels, and the strength of the senior mark, regardless of whether the junior user acted in good faith. The independent-adoption argument, at best, may blunt one factor in the multi-factor analysis, but it does not provide a complete defense to MCB's claims.
Suggestive vs. Arbitrary Classification. Brindoval's contention that "meridian" is merely a suggestive term in the cleaning-product context, and that MCB therefore cannot monopolize it, understates the strength of MCB's marks. While it is true that "meridian" is a common English word with geographic and directional connotations, the relevant inquiry under the Lanham Act is the strength of the mark as actually used in the marketplace. MCB has used the MERIDIAN mark continuously in connection with household cleaning products since approximately 2011 — a period of over eleven years. MCB obtained its first federal registration, U.S. Registration No. 4,218,506, on August 14, 2012, and has since obtained two additional registrations covering the MERIDIAN CLEAN mark and the MERIDIAN wave design. Over the course of MCB's use, the company has invested a cumulative total of approximately $47.2 million in advertising and promotional expenditures for the MERIDIAN cleaning-product line. Annual revenue from the MERIDIAN cleaning line was approximately $94.5 million in fiscal year 2022. These figures strongly support a finding of acquired distinctiveness and substantial commercial strength under the Polaroid analysis. Even assuming the mark is suggestive rather than arbitrary, the weight of MCB's use, investment, and commercial success elevates its marks well above the threshold where narrow protection would be appropriate.
Channel-of-Trade Argument. Brindoval's contention that the parties operate in separate trade channels is significantly undermined by the facts. Both MCB and Brindoval sell household cleaning products falling within International Class 3 of the Nice Classification. While Brindoval's brick-and-mortar retail locations are concentrated in twelve Midwestern and Mountain West states, Brindoval's e-commerce platform at www.crestviewhomegoods.com is accessible to and serves consumers nationwide, including consumers in the same geographic markets where MCB's products are sold through grocery, club, and e-commerce channels. The overlap of the parties' goods in International Class 3 and the nationwide reach of Brindoval's online sales create a substantial likelihood that consumers will encounter both parties' products in the same purchasing environment. Courts have consistently recognized that e-commerce eliminates traditional geographic boundaries in the channel-of-trade analysis, and Brindoval's attempt to cabin its use to a regional footprint is inconsistent with the reality of its own distribution model.
Trade-Dress Silence. Perhaps most significantly, Brindoval's response fails to engage in any meaningful way with the trade-dress concerns raised in our cease-and-desist letter. MCB's MERIDIAN cleaning products are marketed in a distinctive teal-and-white color scheme featuring a stylized wave device, which is the subject of U.S. Registration No. 5,589,320. Brindoval's MERIDIAN FRESH products employ a strikingly similar teal-and-white color scheme and incorporate a wave device that closely resembles MCB's registered design mark. The visual similarity between the two product lines is, in our view, one of MCB's strongest evidentiary points, and Brindoval's failure to offer any substantive response on this issue may indicate that it recognizes its vulnerability on this front. We intend to make the trade-dress similarities a central element of our preliminary injunction motion.
3.2 Brindoval's Potential Strengths and Risks to MCB
While we believe MCB's position is strong, candor requires that we identify certain factors that may complicate the litigation and that should inform our strategic planning.
Brindoval's Resources. Brindoval is a substantial commercial enterprise. According to publicly available information, Brindoval reported approximately $2.1 billion in total revenue for fiscal year 2022. The company has the financial resources and organizational capacity to mount a vigorous defense, and its retention of Halverson McKay & Pruitt — a well-regarded firm with a significant intellectual property practice — Signals that it intends to do so. MCB should be prepared for a contested and potentially protracted proceeding.
Declaratory Judgment Threat. Mr. Halverson's express reservation of Brindoval's right to seek a declaratory judgment of non-infringement is credible and should be taken seriously in our litigation planning. If MCB delays in filing suit, Brindoval may attempt to file a declaratory judgment action in a forum of its choosing, potentially in the District of Minnesota, where Brindoval's counsel is located and where Brindoval has a significant operational presence. Filing our federal complaint promptly in the Southern District of New York is important, among other reasons, to establish MCB's choice of forum and to preempt a declaratory judgment action by Brindoval.
Brindoval's Financial Incentive. The MERIDIAN FRESH product line has already generated approximately $6.8 million in gross revenue in its first five months of operation (July through November 2022, with the November figures estimated based on current run rates). This revenue figure gives Brindoval a meaningful financial incentive to resist abandoning the mark and to invest in the defense of its use. It also represents a measure of the scope of the alleged infringement and will be relevant to damages calculations should MCB prevail.
Consumer Confusion Evidence. Any trademark infringement action will require MCB to present evidence of actual or likely consumer confusion. While MCB's case does not depend on evidence of actual confusion — likelihood of confusion, assessed under the Polaroid factors, is sufficient — the availability of survey evidence and instances of actual confusion would materially strengthen MCB's position, particularly at the preliminary injunction stage. As discussed below, we have already engaged Dr. Elaine Furman of Lakeshore Brand Consulting LLC to conduct a consumer confusion survey, and that survey is currently underway. In addition, we will work with Rachel Dominguez, MCB's Vice President of Brand Management, to document any instances of actual consumer confusion that MCB's customer service or sales teams have observed or recorded.
4. Recommended Next Steps
Based on the foregoing assessment, and consistent with the strategy outlined in our October 7, 2022 memorandum, we recommend the following course of action.
4.1 Notice of Opposition at the Trademark Trial and Appeal Board
Consistent with our prior recommendation, and with the authorization you provided during our October 7 call, we have already prepared and filed a Notice of Opposition before the Trademark Trial and Appeal Board ("TTAB") on October 14, 2022. The opposition has been assigned Opposition No. 91/278,415 and challenges Brindoval's pending trademark application, Serial No. 97/412,558, for the mark "MERIDIAN FRESH" in International Class 3 for household cleaning products.
The opposition is based on likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and cites MCB's prior federal registrations — U.S. Registration Nos. 4,218,506 (MERIDIAN), 5,034,771 (MERIDIAN CLEAN), and 5,589,320 (MERIDIAN wave design) — as the basis for MCB's claim of prior rights. The TTAB proceeding will run in parallel with any federal court litigation and provides an additional and independent avenue to block the registration of the MERIDIAN FRESH mark. Even if the federal court action were to be delayed or otherwise impeded, the TTAB opposition will proceed on its own schedule and can prevent Brindoval from obtaining the benefits of federal registration for the challenged mark.
4.2 Federal Complaint in the Southern District of New York
We recommend that MCB file a complaint in the United States District Court for the Southern District of New York asserting the following claims:
(a) Federal Trademark Infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), based on Brindoval's use of the MERIDIAN FRESH mark in connection with goods that are identical or closely related to the goods covered by MCB's federal registrations;
(b) False Designation of Origin and Unfair Competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), based on Brindoval's use of the MERIDIAN FRESH mark and trade dress in a manner that is likely to cause confusion, mistake, or deception as to the origin, sponsorship, or affiliation of Brindoval's products; and
(c) Trademark Dilution under New York General Business Law § 360-l, based on the likelihood that Brindoval's use of a mark incorporating the term "MERIDIAN" in the same product category will dilute the distinctive quality of MCB's marks.
Venue in the Southern District of New York is appropriate given that MCB is headquartered at 450 Park Avenue South, New York, New York 10016, and given the nationwide reach of the alleged infringement through Brindoval's e-commerce channel, which serves consumers within this judicial district. Personal jurisdiction over Brindoval is established by Brindoval's e-commerce sales into New York and its purposeful availment of the benefits of conducting business in this state.
We anticipate filing the complaint in early November 2022. This timeline will allow us to finalize the supporting declarations and exhibits that will accompany the complaint and the preliminary injunction motion discussed below.
4.3 Motion for Preliminary Injunction
Given the ongoing and escalating harm from consumer confusion, and given that every additional day of Brindoval's use of the MERIDIAN FRESH mark further erodes the distinctiveness of MCB's marks and brand equity, we recommend filing a motion for preliminary injunction contemporaneously with, or shortly after, the filing of the complaint.
The preliminary injunction motion will focus particularly on the trade-dress elements of MCB's claims — specifically, the teal-and-white color scheme and wave device used on Brindoval's MERIDIAN FRESH packaging — where the visual similarity to MCB's registered trade dress is most stark and most likely to create consumer confusion at the point of sale. The motion will also seek to enjoin Brindoval from using the MERIDIAN FRESH mark in any form pending trial on the merits.
To obtain a preliminary injunction in the Second Circuit, MCB must demonstrate: (i) a likelihood of success on the merits; (ii) irreparable harm absent injunctive relief; (iii) a balance of hardships tipping in MCB's favor; and (iv) that the public interest would not be disserved by the injunction. We believe MCB can satisfy each of these requirements. In the trademark context, the Second Circuit has recognized a presumption of irreparable harm where a plaintiff demonstrates a likelihood of confusion, and MCB's strong marks, extensive use, and the visual similarity of the parties' products and packaging provide a compelling basis for a likelihood-of-success finding.
Critical to the preliminary injunction motion will be the consumer confusion survey being conducted by Dr. Elaine Furman of Lakeshore Brand Consulting LLC. Dr. Furman is employing a Squirt / modified Eveready survey protocol with a 612-respondent sample drawn from consumers who purchase household cleaning products. The survey is expected to be completed by late October 2022, and Dr. Furman will prepare a declaration and expert report summarizing her findings for submission in connection with the motion.
In addition, we will prepare a supporting declaration from Rachel Dominguez, MCB's Vice President of Brand Management, addressing MCB's brand history, the development and evolution of the MERIDIAN product line, the company's cumulative advertising investment, market recognition, and any reported instances of actual consumer confusion. Ms. Dominguez's declaration will provide the factual foundation for the irreparable-harm and likelihood-of-success arguments.
We anticipate filing the preliminary injunction motion in mid-to-late November 2022.
4.4 Continuation of Expert Work
As noted above, Dr. Elaine Furman of Lakeshore Brand Consulting LLC, 333 West Wacker Drive, Suite 1100, Chicago, Illinois 60606, is currently conducting a consumer confusion survey pursuant to the engagement letter dated October 5, 2022. Dr. Furman is a recognized expert in trademark survey methodology with over twenty years of experience, and her work will be central to MCB's case at both the preliminary injunction stage and at trial.
In addition to the confusion survey, we will ask Lakeshore Brand Consulting to prepare a preliminary damages analysis. This analysis will include: (i) an assessment of MCB's lost profits attributable to Brindoval's infringing conduct; (ii) a reasonable royalty framework as an alternative measure of damages; and (iii) an analysis of potential disgorgement of Brindoval's MERIDIAN FRESH revenues, which, as noted, are estimated at approximately $6.8 million for the first five months of sales. Under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a), MCB may be entitled to recover Brindoval's profits, MCB's actual damages, and costs of the action, and we will develop the evidentiary record necessary to support these claims.
4.5 Anticipated Timeline and Budget Considerations
For your reference, the anticipated timeline for the next phase of this matter is as follows:
The TTAB opposition proceeding will follow the Board's standard schedule, including institution, answer period, discovery, and briefing phases. However, it is common practice for the TTAB to suspend its proceedings if a related federal court action is pending. We will monitor both proceedings and coordinate strategy to ensure consistency and to minimize duplication of effort and expense.
We are mindful of the cost implications of pursuing parallel proceedings before the TTAB and in federal court. As discussed during our prior conversations and as set forth in our engagement letter, our hourly rates for this matter are as follows:
• Partners (Alan Ngo, Marcus Delgado): $1,050 per hour
• Senior Associates (Christy Bauer): $725 per hour
• Associates (Peter Vassiliev): $575 per hour
We will coordinate the staffing and strategy of both proceedings to minimize duplication and to make efficient use of MCB's resources. We will provide regular status updates, including monthly billing summaries and strategy reports, and we will seek your input and authorization before making any significant strategic decisions or incurring any extraordinary expenditures.
5. Requested Client Action
In light of the foregoing, we respectfully request the following from MCB:
1. Authorization to File. Please confirm MCB's authorization to proceed with the filing of the federal complaint in the Southern District of New York and the accompanying motion for preliminary injunction, as outlined in Sections 4.2 and 4.3 above. While we have already filed the TTAB Notice of Opposition with the authorization provided during our October 7 call, we wish to obtain express confirmation before initiating the federal court litigation.
2. Internal Briefing. Please advise whether Sandra Kwan (Chief Executive Officer) or James Alderton of Waypoint Capital Partners LLC should be briefed on the escalation of this matter before the federal complaint is filed. We understand that Waypoint is MCB's majority equity holder and may have governance or approval requirements relating to litigation expenditures in this range. If so, we are happy to prepare a briefing memorandum for Ms. Kwan and Mr. Alderton, or to participate in a call with them at your direction.
3. Coordination with Rachel Dominguez. We will coordinate directly with Rachel Dominguez, Vice President of Brand Management, to prepare her supporting declaration for the preliminary injunction motion. We ask that you facilitate an introduction or, if preferred, arrange for Ms. Dominguez to contact Christy Bauer on our team to schedule an initial interview.
Closing
We appreciate your confidence in Calderwood & Harkness and your continued partnership in this matter. We believe MCB has a strong position, and we are committed to pursuing an aggressive but measured strategy to protect MCB's valuable trademark rights and brand equity.
We are available to discuss this letter and our recommendations at your convenience. We suggest scheduling a call early next week — we have availability on Monday, October 17, or Tuesday, October 18 — to address any questions and to finalize the authorization to proceed. Please do not hesitate to contact me directly at (212) 506-4412 or at ango@calderwoodharkness.com.
Very truly yours,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo Partner, intellectual Property Calderwood & Harkness LLP 1251 Avenue of the Americas, 40th Floor New York, New York 10020 Tel: (212) 506-4412
Email: ango@calderwoodharkness.com
cc: Marcus Delgado, Calderwood & Harkness LLP Christy Bauer, Calderwood & Harkness LLP
PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION This letter and any accompanying documents contain information that is privileged and confidential and is intended solely for the use of the individual or entity to whom it is addressed. If you are not the intended recipient, you are hereby notified that any dissemination, distribution, copying, or other use of this communication is strictly prohibited. If you have received this communication in error, please notify the sender immediately and destroy all copies.
Matter No. 1011-00003 | Billing Code: 11470-001
Action | Target Date
TTAB Notice of Opposition filed | October 14, 2022 (completed)
Completion of consumer confusion survey | Late October 2022
Filing of federal complaint (S.D.N.Y.) | Early November 2022
Filing of preliminary injunction motion | Mid-to-late November 2022

CALDERWOOD & HARKNESS LLP Attorneys at Law

PRIVILEGED AND CONFIDENTIAL ATTORNEY-CLIENT COMMUNICATION

CALDERWOOD & HARKNESS LLP

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