PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION
CALDERWOOD & HARKNESS LLP Attorneys at Law 1251 Avenue of the Americas, 40th Floor New York, NY 10020 Tel: (212) 506-7800
December 20, 2022
Thomas R. Hennessy, Esq. General Counsel Meridian Consumer Brands LLC 450 Park Avenue South, 14th Floor New York, NY 10016
Re: Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Case No. 1:22-cv-09483 (S.D.N.Y.) — Report on Preliminary Injunction Hearing
Matter No.: 1011-00003 Billing Code: 11470-001
PRIVILEGED AND CONFIDENTIAL / ATTORNEY-CLIENT COMMUNICATION
Dear Tom:
1. Introduction and Purpose
I am writing to provide you with a comprehensive report on the preliminary injunction hearing held yesterday, December 19, 2022, before the Honorable Patricia M. Albright, United States District Judge, in the United States District Court for the Southern District of New York, in Meridian Consumer Brands LLC v. Brindoval Home Goods Inc., Case No. 1:22-cv-09483 (S.D.N.Y.).
The hearing addressed Meridian Consumer Brands LLC's ("MCB") Motion for Preliminary Injunction, which was filed on November 18, 2022, seeking to enjoin Brindoval Home Goods Inc. ("Brindoval") from using the mark MERIDIAN FRESH and related trade dress in connection with household cleaning products during the pendency of this action. The motion was fully briefed prior to the hearing, with Brindoval's opposition papers having been filed on December 2, 2022, and MCB's reply brief filed on December 12, 2022.
I attended the hearing along with my colleague Alan Ngo. Gregory T. Halverson of Halverson McKay & Pruitt LLP appeared on behalf of Brindoval, accompanied by his senior associate, Megan Janssen. Rachel Dominguez, MCB's Vice President of Brand Management, was present in the gallery to support MCB's case and was available as a fact witness if the Court had requested testimony or if circumstances required her to take the stand. The hearing lasted approximately two and a half hours, commencing at 10:00 a.m. and concluding at approximately 12:30 p.m.
The purpose of this letter is to summarize the arguments presented by both sides, report on the Court's questioning and observable inclinations, provide our preliminary assessment of the likely outcome, and outline recommended next steps. We believe the hearing went well for MCB, though certain aspects of the Court's questioning warrant careful analysis and strategic planning, as discussed in detail below.
2. Summary of MCB's Presentation
Alan Ngo presented MCB's arguments in support of the preliminary injunction, organizing the presentation around the well-established four-factor test for injunctive relief in the Second Circuit: (1) likelihood of success on the merits; (2) irreparable harm absent preliminary relief; (3) the balance of hardships tipping in the movant's favor; and (4) that the public interest would not be disserved by the issuance of an injunction. See Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20 (2008); Salinger v. Colting, 607 F.3d 68, 79–80 (2d Cir. 2010). Alan presented each factor methodically and supported each point with references to the evidentiary record that MCB had assembled.
a. Likelihood of Success on the Merits
The core of MCB's argument was that it has a strong likelihood of prevailing on its trademark infringement and trade dress claims under the Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492 (2d Cir. 1961), multi-factor test for likelihood of confusion. Alan addressed the relevant Polaroid factors as follows:
Strength of MCB's MERIDIAN Mark. Alan presented evidence demonstrating that the MERIDIAN mark is a strong, commercially significant mark that has been in continuous use in connection with household cleaning products since approximately 2011 — over eleven years of sustained commercial use. MCB holds three federal trademark registrations for the mark and related marks:
• U.S. Reg. No. 4,218,506 — MERIDIAN (standard character mark), International Class 3, registered August 14, 2012;
• U.S. Reg. No. 5,034,771 — MERIDIAN CLEAN (standard character mark), International Class 3, registered October 18, 2016; and
• U.S. Reg. No. 5,589,320 — MERIDIAN (stylized logo with wave device), International Class 3, registered July 10, 2018.
Each of these registrations is now incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065, having been on the Principal Register for at least five consecutive years with no pending challenge. Alan emphasized this point to the Court, noting that the incontestable status of the registrations establishes conclusive evidence of the validity of the marks, MCB's ownership of the marks, and MCB's exclusive right to use the marks in connection with the goods identified in the registrations.
Commercial Significance. To further demonstrate the inherent and acquired strength of the MERIDIAN mark, Alan presented evidence of substantial commercial success and consumer recognition. MCB's MERIDIAN cleaning product line generated approximately $94.5 million in revenue in fiscal year 2022, representing approximately 24.4% of MCB's total revenue of approximately $387 million. From the mark's first use in 2011 through 2022, MCB has invested a cumulative total of approximately $47.2 million in advertising and promotional expenditures dedicated to the MERIDIAN brand, spanning national television campaigns, digital advertising, retail co-op programs, and in-store point-of-sale materials. This level of investment has produced substantial consumer awareness and brand equity, as detailed in the Dominguez Declaration and supporting exhibits.
Similarity of Marks. Alan argued that the marks at issue — MERIDIAN and MERIDIAN FRESH — are confusingly similar. The dominant element in both marks is the word "MERIDIAN," which is identical. The addition of the word "FRESH" by Brindoval does not create a meaningfully different commercial impression because "FRESH" is merely descriptive, and at most weakly suggestive, when used in connection with cleaning products — a category in which freshness is a commonplace product attribute. Alan cited well-settled precedent in the Second Circuit holding that the addition of a descriptive or generic term to an otherwise identical dominant element does not eliminate likelihood of confusion. See, e.g., Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1078 (2d Cir. 1993) (noting that marks sharing a common dominant element may be confusingly similar despite differences in subsidiary elements).
Similarity of Trade Dress. In addition to the word mark claim, Alan presented MCB's trade dress infringement arguments. Alan directed the Court's attention to Brindoval's MERIDIAN FRESH product packaging, which employs a teal-and-white color scheme and incorporates a stylized wave device that closely resembles the wave device in MCB's registered logo mark (U.S. Reg. No. 5,589,320). Side-by-side comparisons of the packaging, which were included in the evidentiary record as exhibits to the Dominguez Declaration, demonstrated what we believe to be a striking visual similarity between the two trade dress schemes. Alan argued that the overall look and feel of Brindoval's packaging would create an immediate association in the consumer's mind with MCB's MERIDIAN product line.
Identity of Goods and Overlapping Trade Channels. Alan emphasized that both MCB's MERIDIAN products and Brindoval's MERIDIAN FRESH products are used for identical purposes — household cleaning — and fall within International Class 3, specifically all-purpose cleaners, glass cleaners, and disinfecting products. Moreover, both parties' products are sold through overlapping trade channels, including brick-and-mortar retail stores and e-commerce platforms. Although Brindoval sells primarily through its own retail outlets, Alan noted that consumers frequently encounter both brands when shopping for cleaning products online, where algorithmic recommendations and search results often present competing products side by side.
Evidentiary Support — Dominguez Declaration. Alan relied heavily on the Declaration of Rachel Dominguez, which provided a detailed account of MCB's brand history, commercial success, advertising and promotional activities, and — critically — documented instances of consumer confusion. Ms. Dominguez's declaration detailed a total of forty-seven consumer complaints received by MCB's customer service department between August 2022 and November 2022, in which consumers either (i) contacted MCB believing they had purchased a MERIDIAN product when they had in fact purchased MERIDIAN FRESH, or (ii) expressed confusion about whether MCB had launched a new product line under the name MERIDIAN FRESH, or (iii) inquired about a perceived connection between the two brands. While the number of complaints is modest in absolute terms, Alan argued it is significant given the relatively short period of concurrent marketplace use (approximately five months) and the well-recognized principle that reported confusion complaints represent only the "tip of the iceberg" of actual consumer confusion. See Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986).
Evidentiary Support — Dr. Furman's Consumer Confusion Survey. Alan also presented the survey evidence submitted in support of the motion. The Declaration of Dr. Elaine Furman of Lakeshore Brand Consulting LLC described a consumer confusion survey conducted in October 2022 employing a Squirt-design / modified Eveready protocol. The survey was administered to a sample of 612 consumers who had purchased household cleaning products within the preceding twelve months. The survey results showed a raw confusion rate of 38.6% — that is, 38.6% of respondents in the test group indicated a belief that the MERIDIAN FRESH product was made by, sponsored by, or otherwise affiliated with the maker of MERIDIAN products. The control-group noise rate was 7.2%, yielding a net confusion rate of 31.4%. Alan characterized this net confusion figure as well above the threshold that courts in the Second Circuit have found probative of likelihood of confusion, citing precedent recognizing net confusion rates above 15% as strong evidence. See, e.g., McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 358 (3d Cir. 2007); Schieffelin & Co. v. Jack Co. of Boca, Inc., 850 F. Supp. 232, 246 (S.D.N.Y. 1994).
b. Irreparable Harm
On the second prong, Alan argued that MCB faces irreparable injury that cannot be remedied by monetary damages alone. He emphasized that ongoing consumer confusion constitutes a direct and continuing injury to MCB's goodwill and brand equity — intangible assets that MCB has built over more than a decade and through the investment of tens of millions of dollars. Alan argued that the harm to brand integrity, consumer trust, and marketplace reputation caused by Brindoval's infringing activities cannot be adequately measured or compensated through an award of damages after the fact. He further invoked the well-established principle in the Second Circuit that a showing of likelihood of confusion in a trademark case gives rise to a presumption of irreparable harm. See Louboutin v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 215 (2d Cir. 2012). While acknowledging that recent Supreme Court authority in Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006), has placed some limitations on automatic presumptions of irreparable harm in intellectual property cases, Alan argued that the facts here independently support a finding of irreparable injury even without resort to a presumption, given the documented consumer confusion, the closeness of the marks, and the identity of goods and channels.
c. Balance of Hardships
Alan presented a compelling contrast between the hardships the parties would face. MCB has used the MERIDIAN mark for over a decade, has built substantial consumer recognition and goodwill, and generates nearly $100 million annually in revenue from the MERIDIAN product line. Brindoval, by contrast, launched its MERIDIAN FRESH line only in July 2022 — approximately five months before the hearing — and in that short period generated approximately $6.8 million in gross revenue from the MERIDIAN FRESH products. While $6.8 million is not an insignificant sum, it is modest in the context of Brindoval's overall fiscal year 2022 revenue of approximately $2.1 billion. The MERIDIAN FRESH line thus represents approximately 0.32% of Brindoval's total revenue. Alan argued that the hardship to Brindoval of rebranding the line — while real — is manageable and substantially outweighed by the ongoing harm to MCB's established brand. Alan also noted that Brindoval, as a large and sophisticated retailer, has ample resources and infrastructure to execute a rebranding effort.
d. Public Interest
Finally, Alan addressed the public interest factor, arguing that the public has a strong interest in avoiding confusion in the marketplace. The Lanham Act's core purpose is to protect consumers from being misled about the source or sponsorship of goods, and the issuance of a preliminary injunction would directly serve that interest. Alan noted that this factor, while sometimes given less independent weight than the other three, consistently favors the trademark owner where likelihood of confusion has been shown.
3. Summary of Brindoval's Opposition Arguments
Gregory T. Halverson of Halverson McKay & Pruitt LLP presented Brindoval's opposition to the preliminary injunction. Mr. Halverson is a skilled and experienced advocate, and his presentation was polished and well-organized, though we believe several of his arguments were ultimately unpersuasive in light of the evidentiary record and the Court's reactions. His key arguments were as follows:
Independent Adoption. Halverson asserted that Brindoval independently selected the name "MERIDIAN FRESH" as a house brand through its private-label product development process, which was led by Nathan Cho, Brindoval's Vice President of Private Label Development. Halverson argued that Brindoval had no awareness of MCB's MERIDIAN marks and no intent to trade on MCB's goodwill. He characterized "Meridian" as a common English word with geographic and general connotations — evoking ideas of a line of longitude, a peak, or a high point — and argued that it is not inherently distinctive for cleaning products. While the independent adoption argument is relevant to the intent factor under Polaroid, it does not negate the objective evidence of confusing similarity, and the Court did not appear to accept the premise that mere absence of subjective intent is dispositive at the preliminary injunction stage.
Weakness of the Mark. Halverson contended that MCB's MERIDIAN mark is at most suggestive and occupies a relatively weak position in the consumer products marketplace. In support of this argument, he pointed to alleged third-party uses of the word "Meridian" in connection with various other product categories. However, Judge Albright noted during the argument that the cited third-party uses were not in International Class 3 cleaning preparations and asked Halverson to identify any third-party registrations or uses of "Meridian" for household cleaning products. Halverson was unable to identify any, which appeared to undercut this line of argument.
Dissimilarity of Marks in Commercial Context. Halverson argued that the marks create different commercial impressions when considered in the context in which consumers actually encounter them. Specifically, he emphasized that MERIDIAN FRESH products are sold exclusively in Brindoval's own retail stores and on its e-commerce platform, and that the product packaging and in-store displays prominently feature the "Brindoval Home Goods" house brand alongside the "MERIDIAN FRESH" product name. Halverson contended that reasonable consumers shopping in a Brindoval store would understand MERIDIAN FRESH to be a Brindoval private-label brand and would not confuse it with MCB's MERIDIAN products. While this argument has some surface appeal, it overlooks the substantial overlap in online channels and the well-established principle that a junior user's own house mark does not eliminate likelihood of confusion where the infringing mark itself is confusingly similar to the senior user's mark.
Challenge to Survey Methodology. Halverson challenged the reliability of Dr. Furman's consumer confusion survey, arguing that the stimulus materials used in the survey were not representative of actual marketplace conditions. Specifically, he suggested that the survey stimuli may have been presented in a manner that exaggerated the similarity of the two brands by stripping away contextual cues that consumers would normally encounter at the point of sale. Halverson referenced Brindoval's retained rebuttal expert, Dr. Ronald Trask of Pinnacle Research Group Inc., but acknowledged that Brindoval had not yet submitted a formal rebuttal survey report, indicating that one was in preparation. The absence of a competing expert report at this stage weakened Brindoval's ability to seriously challenge the survey evidence.
No Actual Confusion in the Marketplace. Brindoval argued that despite approximately five months of concurrent marketplace use (July 2022 through December 2022), there was no documented evidence of actual point-of-sale confusion occurring in Brindoval retail stores. Halverson distinguished the customer-service complaints documented in the Dominguez Declaration, characterizing them as post-sale confusion or inquiries rather than evidence of confusion at the point of purchase. This distinction, while technically relevant, is of limited weight given that post-sale confusion is recognized as actionable under the Lanham Act, and given that the brief period of concurrent use limits the evidentiary significance of the absence of extensive confusion evidence.
Balance of Hardships Favors Brindoval. Halverson argued that Brindoval had invested significantly in developing and launching the MERIDIAN FRESH product line across 148 retail locations nationwide and on its e-commerce platform at www.crestviewhomegoods.com. He contended that an injunction requiring Brindoval to cease use of the MERIDIAN FRESH mark and trade dress would cause substantial disruption and financial loss, including the costs of destroying or modifying existing packaging and inventory, redesigning marketing materials, and potentially confusing Brindoval's own customer base. While these are legitimate considerations, as noted above, the MERIDIAN FRESH line represents a very small fraction of Brindoval's overall business.
Counterclaim for Declaratory Judgment. Halverson reminded the Court that Brindoval had filed its Answer and Counterclaim on December 5, 2022, which includes a counterclaim seeking a declaratory judgment of non-infringement. He argued that the existence of this counterclaim reflects a genuine dispute on the merits that counsels against the extraordinary remedy of a preliminary injunction. While the counterclaim is procedurally relevant and ensures that Brindoval's rights are preserved, the mere filing of a counterclaim does not, standing alone, preclude injunctive relief.
Brindoval's Trademark Application. It is also worth noting for context that Brindoval filed a trademark application for MERIDIAN FRESH, Serial No. 97/412,558, with the United States Patent and Trademark Office on May 12, 2022 — approximately two months before the product's commercial launch in July 2022. That application was published for opposition on September 6, 2022. MCB timely filed its Notice of Opposition on October 14, 2022, and that proceeding is now pending before the Trademark Trial and Appeal Board as Opposition No. 91/278,415. The existence of the TTAB proceeding, while a separate forum, provides additional context for the parties' respective positions and may become relevant to any future settlement discussions.
4. The Court's Questioning and Observations
Judge Albright was exceptionally well-prepared and engaged actively with both sides throughout the hearing. She had clearly reviewed the briefs and supporting declarations in detail, and her questions were probing and incisive. We wish to highlight several key areas of the Court's questioning and the observations we drew from them:
On Mark Similarity. Judge Albright focused significant attention on the similarity of the marks. She noted the shared dominant element "MERIDIAN" and directed a pointed question to Mr. Halverson, asking him to explain how the addition of the descriptive word "FRESH" sufficiently distinguishes the marks in a product class where freshness is, in the Court's words, "a generic attribute of cleaning products — every cleaning product promises to make things fresh." Halverson responded by emphasizing the overall commercial impression created by the MERIDIAN FRESH mark when used in conjunction with Brindoval's house brand and retail environment. This response did not appear to fully satisfy the Court, and Judge Albright moved on without pursuing the point further, which we interpret as an indication that she found the similarity argument persuasive on MCB's behalf.
On Trade Dress. The Court appeared particularly focused on the trade dress similarities between the parties' products — specifically, the teal-and-white color scheme and the stylized wave device used on Brindoval's MERIDIAN FRESH packaging. Judge Albright asked Brindoval's counsel directly whether the wave device on Brindoval's packaging was coincidental, given its resemblance to the wave device in MCB's registered logo mark (U.S. Reg. No. 5,589,320). Mr. Halverson stated that the wave device was developed by Brindoval's in-house design team independently and without reference to MCB's mark. Judge Albright appeared skeptical of this representation, noting what she described as the "remarkable similarity" between the two wave devices and observing that the coincidence was "difficult to credit without further evidence." This line of questioning was, in our assessment, the most significant moment of the hearing and strongly suggests that the Court views the trade dress claim as particularly compelling.
On the Survey Evidence. Judge Albright engaged with the survey evidence in a measured and thoughtful manner. She questioned whether the 31.4% net confusion rate reported in Dr. Furman's survey might be inflated by the choice of stimuli, echoing some of the concerns raised in Brindoval's opposition brief. Alan Ngo responded by explaining the modified Eveready protocol employed by Dr. Furman, the care taken in selecting stimuli that reflected real marketplace conditions, and the function of the control group as a check on background noise and demand effects. The Court did not dismiss the survey evidence, but Judge Albright stated that she would "weigh the evidence carefully" and consider the methodological objections raised by Brindoval. We interpret this as an indication that the Court may not give the survey its full face value at this preliminary stage but will still consider it as probative evidence of likelihood of confusion.
On Irreparable Harm. Judge Albright questioned whether MCB could demonstrate actual lost sales attributable to Brindoval's use of the MERIDIAN FRESH mark, or whether the claimed harm was "more theoretical at this stage." This question was directed to Alan Ngo, who responded by pointing to the consumer confusion complaints documented in the Dominguez Declaration and by emphasizing the inherent difficulty of quantifying erosion of goodwill and brand equity in monetary terms. Alan argued that the very nature of goodwill harm — its intangibility, its cumulative effect, and the impossibility of fully restoring consumer perceptions once damaged — is precisely what makes it irreparable. The Court appeared to accept this argument in principle, nodding as Alan spoke and not pressing further on the point.
On Scope of Relief. This was perhaps the most strategically significant line of questioning from the Court. Judge Albright asked MCB directly whether it would accept a narrower injunction that targeted only the trade dress elements — specifically, the teal-and-white color scheme and the wave device — rather than the word mark "MERIDIAN FRESH" as well. Alan maintained MCB's position that both the word mark and the trade dress should be enjoined, as the word mark itself is confusingly similar to MCB's MERIDIAN marks and the trade dress elements compound the confusion. However, Alan acknowledged the Court's discretion in fashioning appropriate preliminary relief and indicated that MCB would, of course, comply with whatever scope of relief the Court determines is warranted. This line of questioning strongly suggests that the Court may be inclined to grant partial injunctive relief — enjoining the trade dress but potentially declining to enjoin the word mark at this preliminary stage — and we should prepare for that possibility in our strategic planning.
On the Bond Requirement. Judge Albright briefly raised the issue of the security requirement under Federal Rule of Civil Procedure 65(c), which requires the Court to set a bond amount as a condition of issuing a preliminary injunction. The Court asked both parties for their positions on an appropriate bond amount. This topic was not extensively debated, and neither side offered a specific figure during the hearing, though Halverson suggested that any bond should be "substantial" in light of the potential disruption to Brindoval's business. The fact that the Court raised the bond issue is itself a positive indicator, as it suggests that the Court is actively contemplating the issuance of some form of injunctive relief and is already considering the practical mechanics of implementation.
Timeline Indication. At the conclusion of the hearing, Judge Albright stated that she would issue a written decision on MCB's Motion for Preliminary Injunction within approximately three weeks. Based on this timeline, we anticipate a ruling on or around January 9, 2023, though the actual date may vary somewhat. The Court indicated that the decision would be issued as a written Memorandum Opinion and Order, which will provide a detailed analysis of each of the four injunctive relief factors.
5. Assessment and Preliminary Analysis
Based on the arguments presented, the evidentiary record, and the Court's questioning and demeanor during the hearing, we offer the following preliminary assessment:
Overall. The hearing went favorably for MCB. The Court appeared receptive to our arguments on likelihood of confusion, particularly with respect to the trade dress claims, and Brindoval's opposition arguments — while competently presented — did not appear to fully resonate with Judge Albright on several key points. However, the Court's questioning also signals the possibility of a split ruling, and we believe it is important to manage expectations accordingly.
Trade Dress. We believe there is a strong likelihood that the Court will order Brindoval to modify its product packaging to eliminate the elements that create a confusingly similar trade dress. Specifically, we expect the Court to order removal of the wave device and a change to the teal-and-white color scheme. The Court's expressed skepticism about the claim of independent development of the wave device was notable and, in our experience, indicative of a judge who has already formed a preliminary view that the similarity is not coincidental. This aspect of the ruling, if issued, would provide meaningful and immediate protection for MCB's brand identity and would require Brindoval to undertake a significant redesign of its packaging.
Word Mark. We are less confident that the Court will enjoin Brindoval's use of the word mark "MERIDIAN FRESH" at this preliminary stage. The Court's question about whether MCB would accept a narrower, trade-dress-only injunction is a clear indicator that the Court may be considering a more limited remedy. This approach would be consistent with the Second Circuit's general caution about enjoining word marks prior to trial where there exists a genuine factual dispute about the strength of the mark, the scope of protection, and the extent of likely confusion. While we believe MCB has a strong case on the word mark as well, it is possible that the Court will reserve final judgment on that issue for trial, where the full weight of the evidence — including live testimony and a complete survey record — can be assessed.
Survey Evidence. Brindoval's challenge to the survey methodology was not strongly supported at this stage, principally because Brindoval did not submit a competing expert report from Dr. Trask or any other rebuttal survey. The Court may nonetheless decline to give full weight to the 31.4% net confusion figure at the preliminary injunction stage, particularly given that the survey will be subject to more rigorous scrutiny — including Daubert motions, deposition testimony, and cross-examination — during the merits phase of the case. We do not view this as a significant concern; even a discounted version of Dr. Furman's survey results would support a finding of likelihood of confusion.
Brindoval's Counterclaim. The counterclaim for declaratory judgment of non-infringement, while procedurally relevant and preserved in the record, did not appear to significantly influence the Court's preliminary analysis. Judge Albright did not reference the counterclaim during her questioning, and the mere existence of a disputed legal issue is the norm in any case where a preliminary injunction is sought.
Summary. In summary, we believe the most probable outcome is that the Court will grant the preliminary injunction in part — ordering Brindoval to modify its trade dress (wave device and color scheme) — while potentially declining to enjoin the word mark "MERIDIAN FRESH" pending trial. Even a partial injunction would represent a significant victory for MCB, as it would require Brindoval to redesign its packaging and would remove the most egregious elements of similarity from the marketplace. A partial injunction would also strengthen MCB's settlement leverage and its position going into the merits phase of the case.
6. Next Steps and Recommendations
Based on the hearing and our assessment of the likely trajectory of this matter, we recommend the following next steps:
Await the Court's Written Order. We will monitor the docket closely for the issuance of Judge Albright's written Memorandum Opinion and Order on the preliminary injunction motion, which is expected on or about January 9, 2023. Upon receipt of the order, our team will prepare a detailed analysis of the ruling, its implications for MCB's trial strategy and settlement posture, and any appellate considerations that may be warranted.
Prepare for Initial Disclosures. Initial disclosures under Federal Rule of Civil Procedure 26(a)(1) are due on January 23, 2023, pursuant to the Court's initial scheduling order. Our team is actively preparing MCB's initial disclosures, which will identify the following key witnesses:
• Sandra Kwan, MCB's Chief Executive Officer, who can testify to MCB's overall business strategy and the importance of the MERIDIAN brand to the company's product portfolio;
• Thomas R. Hennessy, MCB's General Counsel, who can testify to MCB's trademark prosecution and enforcement history;
• Rachel Dominguez, MCB's Vice President of Brand Management, who can testify to the brand's development, advertising and promotional activities, consumer perception, and documented instances of consumer confusion; and
• Dr. Elaine Furman of Lakeshore Brand Consulting LLC, MCB's survey expert, who can testify to the design, administration, and results of the consumer confusion survey.
The initial disclosures will also identify relevant document categories, including MCB's trademark prosecution files, brand development and marketing records, sales and revenue data, consumer complaint records, and the survey materials and underlying data. In addition, the disclosures will include MCB's computation of damages, which will encompass Brindoval's reported $6.8 million in MERIDIAN FRESH gross revenue during the July through November 2022 period, as well as MCB's claims for any lost profits, disgorgement, and corrective advertising costs.
Draft and Serve discovery Requests. We are currently drafting MCB's first set of interrogatories and requests for production of documents, which we intend to serve on Brindoval shortly after the exchange of initial disclosures. These discovery requests will target, among other things, Brindoval's product development records for the MERIDIAN FRESH line, communications between Nathan Cho and Brindoval's design team regarding the selection of the mark and trade dress, Brindoval's sales and revenue data, Brindoval's marketing and advertising materials, and any consumer feedback or confusion evidence in Brindoval's possession. We will also seek production of all documents relating to Brindoval's pending trademark application (Serial No. 97/412,558) and the communications with its trademark counsel.
Prepare for Potential Court-Ordered Mediation. At the close of the hearing, Judge Albright referenced the possibility of directing the parties to participate in mediation, which she indicated may be addressed in a forthcoming scheduling order. We should be prepared for this possibility, and we recommend that MCB begin to formulate its settlement parameters internally so that we can engage in any mediation process from a position of strength and with a clear understanding of MCB's priorities and acceptable outcomes.
Client Conference Call. We respectfully request a brief conference call with you and Rachel Dominguez at your earliest convenience — ideally within the next few business days — to discuss the following topics in more detail:
• A thorough debrief on the hearing developments and the Court's questioning;
• Preliminary settlement strategy considerations, including MCB's views on acceptable settlement terms in light of the expected ruling;
• Coordination with Waypoint Capital Partners LLC and specifically with James Alderton, Managing Partner, on brand-protection priorities and any broader portfolio considerations that may inform MCB's litigation and settlement strategy; and
• Any business developments or marketplace intelligence that may be relevant to the case as it moves forward into the discovery phase.
Please let us know your availability, and we will coordinate scheduling.
7. Closing
We are pleased with the progress of the hearing and believe MCB is well-positioned as this case moves forward. The evidentiary record assembled by the team — particularly the Dominguez Declaration and Dr. Furman's survey — provided a strong foundation for our arguments, and the Court's engagement with the evidence was encouraging. We will continue to monitor this matter closely and will keep you informed of all material developments.
Please do not hesitate to contact me or Alan Ngo with any questions, concerns, or additional instructions. We will circulate the Court's written order promptly upon issuance and will follow up with a detailed analysis and strategic memorandum at that time.
With best regards,
Christy Bauer Lead Associate, intellectual Property Calderwood & Harkness LLP 1251 Avenue of the Americas, 40th Floor New York, NY 10020 Tel: (212) 506-7834
Email: cbauer@calderwoodharkness.com
cc: Alan Ngo, Calderwood & Harkness LLP Marcus Delgado, Calderwood & Harkness LLP Rachel Dominguez, Vice President of Brand Management, Meridian Consumer Brands LLC
PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION Matter No. 1011-00003