1011-00003 · Waypoint Capital Partners · Litigation/Motions

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

[PROPOSED] ORDER GRANTING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

This matter comes before the Court on the Motion for Preliminary Injunction filed by Plaintiff Meridian Consumer Brands LLC ("MCB" or "Plaintiff") on November 18, 2022, pursuant to Federal Rule of Civil Procedure 65 and 15 U.S.C. § 1116(a).

The Court has considered the following submissions and materials in connection with the Motion: (i) Plaintiff's Memorandum of Law in Support of its Motion for Preliminary Injunction; (ii) the Declaration of Rachel Dominguez, Vice President of Brand Management at MCB, together with all exhibits attached thereto; (iii) the Declaration of Dr. Elaine Furman, Ph.D., of Lakeshore Brand Consulting LLC, including the consumer confusion survey report appended thereto as Exhibit A (the "Furman Survey"); (iv) all exhibits, appendices, and supplemental materials filed in connection with the foregoing submissions; and (v) any opposition papers, declarations, exhibits, and responsive materials filed by Defendant Brindoval Home Goods Inc. ("Brindoval" or "Defendant").

The Court has further considered the arguments and representations of counsel for the parties presented in the briefs and at the hearing held in connection with this Motion.

Having considered all of the foregoing, and for the reasons set forth herein and in the Court's accompanying Memorandum Opinion and Order of even date, the Court finds that Plaintiff has demonstrated each of the four elements required for the issuance of a preliminary injunction in this Circuit, namely: (1) a likelihood of success on the merits of its claims for federal trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for federal unfair competition and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for injury to business reputation and dilution under New York General Business Law § 360-l; (2) a likelihood of irreparable harm to Plaintiff in the absence of preliminary injunctive relief; (3) that the balance of hardships between the parties tips decidedly in Plaintiff's favor; and (4) that the issuance of a preliminary injunction is consistent with and in the public interest.

Accordingly, and for good cause shown, IT IS HEREBY ORDERED as follows:

I. FINDINGS SUPPORTING INJUNCTIVE RELIEF

1. Plaintiff MCB is the owner of the following valid and legally enforceable federal trademark registrations, each of which is registered on the Principal Register of the United States Patent and Trademark Office in International Class 3 (cleaning preparations):

(a) United States Registration No. 4,218,506 for the mark MERIDIAN in standard character form, registered on August 14, 2012, for "household cleaning preparations; all-purpose cleaning preparations; glass cleaning preparations; surface cleaning preparations" in International Class 3;

(b) United States Registration No. 5,034,771 for the mark MERIDIAN CLEAN in standard character form, registered on October 18, 2016, for "household cleaning preparations; multi-surface cleaning preparations; antibacterial cleaning preparations" in International Class 3; and

(c) United States Registration No. 5,589,320 for the mark MERIDIAN in stylized form together with a wave device (the "MERIDIAN Wave-Device Logo"), registered on July 10, 2018, for "household cleaning preparations; cleaning preparations for household use; all-purpose cleaners" in International Class 3.

2. Each of the foregoing registrations is valid, subsisting, and has not been abandoned, cancelled, or the subject of any successful challenge before the Trademark Trial and Appeal Board or any court of competent jurisdiction. The registrations are entitled to the presumptions afforded by 15 U.S.C. § 1057(b) and § 1115(a), including the presumptions of validity, ownership, and the exclusive right to use the registered marks in commerce in connection with the goods specified in the registrations.

3. MCB has used the MERIDIAN mark in interstate commerce in connection with the advertising, promotion, offering for sale, sale, and distribution of household cleaning products continuously and without interruption since approximately 2011. MCB's use of the MERIDIAN mark predates any use by Brindoval of the accused "MERIDIAN FRESH" mark by more than a decade.

4. MCB's MERIDIAN-branded household cleaning product line has achieved substantial commercial success and widespread consumer recognition. In Fiscal Year 2022, MCB's MERIDIAN-branded cleaning products generated approximately $94.5 million in net revenue. Over the period from 2011 through 2022, MCB has invested cumulative advertising and marketing expenditures of approximately $47.2 million in promoting the MERIDIAN brand and MERIDIAN-branded cleaning products through national television advertising, digital marketing campaigns, social media, print advertising, retail co-op advertising, and point-of-sale promotional materials. The evidence demonstrates that the MERIDIAN mark has acquired significant consumer recognition and goodwill in the household cleaning product market.

5. In or about July 2022, Defendant Brindoval launched a private-label household cleaning product line under the mark "MERIDIAN FRESH" in International Class 3. Brindoval's MERIDIAN FRESH products have been offered for sale and sold in all 148 Brindoval retail store locations across the United States and on Brindoval's e-commerce platform accessible at www.crestviewhomegoods.com. The MERIDIAN FRESH product line is sold in the same channels of trade and to the same classes of consumers as MCB's MERIDIAN-branded products, namely retail consumers of household cleaning preparations.

6. Brindoval's MERIDIAN FRESH packaging and trade dress employs a teal-and-white color scheme and a stylized wave device that are confusingly similar to MCB's registered trade dress elements and to the MERIDIAN stylized logo with wave device registered as U.S. Registration No. 5,589,320. The overall commercial impression created by the MERIDIAN FRESH packaging is strikingly similar to the overall commercial impression of MCB's MERIDIAN-branded cleaning product packaging, as demonstrated by the side-by-side comparison exhibits submitted with the Dominguez Declaration.

7. The consumer confusion survey conducted by Dr. Elaine Furman, Ph.D., of Lakeshore Brand Consulting LLC, employing a Squirt-design modified Eveready protocol and utilizing a sample of 612 respondents drawn from the relevant consumer population (adults who have purchased household cleaning products within the preceding twelve months), demonstrated a net confusion rate of 31.4%. The raw confusion rate among respondents exposed to the Brindoval MERIDIAN FRESH packaging was 38.6%, and the control-group noise rate was 7.2%, yielding a net confusion rate of 31.4% after subtraction of the control-group noise. The Court finds that a net confusion rate of 31.4% constitutes strong evidence of actual consumer confusion and is well above the threshold that courts in this Circuit have recognized as probative of a likelihood of confusion. See, e.g., Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986); McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 364 (3d Cir. 2007).

8. Applying the multifactor test for likelihood of confusion set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), the Court finds that Plaintiff has demonstrated a likelihood of confusion among consumers arising from Brindoval's use of the MERIDIAN FRESH mark and associated trade dress. In particular, the Court has considered and weighed: (a) the strength of MCB's MERIDIAN marks, which the evidence shows to be commercially strong based on extensive sales, advertising expenditures, and consumer recognition; (b) the degree of similarity between the MERIDIAN FRESH mark and MCB's MERIDIAN marks, which share the dominant term "MERIDIAN" with the addition of the merely descriptive or suggestive word "FRESH"; (c) the proximity and substantial overlap of the parties' goods, both of which fall squarely within International Class 3 cleaning preparations and are offered to the same consumers through overlapping retail channels; (d) the evidence of actual and likely consumer confusion as reflected in the Furman Survey results; (e) Defendant's apparent intent in adopting a mark incorporating the entirety of Plaintiff's well-known MERIDIAN mark; (f) the quality of Defendant's products; (g) the sophistication of the relevant consumers, who are ordinary retail purchasers exercising relatively low degrees of care in selecting household cleaning products; and (h) the likelihood that MCB may bridge the gap into Brindoval's specific market channels. The majority of these factors weigh strongly in Plaintiff's favor.

9. The Court further finds that Plaintiff has demonstrated a likelihood of irreparable harm in the absence of injunctive relief. Loss of control over one's trademark and the resulting injury to goodwill and brand reputation constitute irreparable harm that cannot be adequately remedied by an award of monetary damages. See 15 U.S.C. § 1116(a); Salinger v. Colting, 607 F.3d 68, 81 (2d Cir. 2010). Every day that Defendant continues to offer MERIDIAN FRESH products using confusingly similar branding, there is an ongoing and increasing risk that consumers will be confused as to the source, sponsorship, or affiliation of Defendant's products, which erodes the distinctiveness and commercial value of Plaintiff's marks and diminishes the goodwill that Plaintiff has built over more than a decade.

10. The balance of hardships tips in Plaintiff's favor. Although the Court recognizes that compliance with an injunction will require Defendant to incur costs in connection with re-branding its private-label cleaning product line, these costs are of Defendant's own making and are outweighed by the continuing and irreparable harm to Plaintiff's trademark rights, consumer goodwill, and brand equity. Defendant's private-label cleaning line has been on the market for approximately four months; Plaintiff's MERIDIAN brand has been in continuous use for more than eleven years.

11. The public interest favors the issuance of a preliminary injunction. The public has a strong interest in being free from confusion as to the source, sponsorship, and affiliation of consumer products, particularly in the household cleaning products market where product quality, safety, and efficacy are matters of legitimate consumer concern. Enforcement of trademark rights serves the public interest by preventing consumer deception and protecting the integrity of the marketplace. See Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012).

II. INJUNCTIVE RELIEF — PROHIBITED CONDUCT

IT IS HEREBY ORDERED that Defendant Brindoval Home Goods Inc., its officers, directors, agents, servants, employees, attorneys (including the law firm of Halverson McKay & Pruitt LLP and all attorneys associated therewith who are involved in this matter), successors, assigns, and all persons in active concert or participation with any of the foregoing who receive actual notice of this Order by personal service or otherwise, are ENJOINED and RESTRAINED, during the pendency of this action, from engaging in any of the following acts or conduct:

A. Mark Usage

Using, displaying, or otherwise employing the mark "MERIDIAN FRESH," or any other mark, name, designation, or trade name that is identical or confusingly similar to Plaintiff's MERIDIAN mark (U.S. Reg. No. 4,218,506), MERIDIAN CLEAN mark (U.S. Reg. No. 5,034,771), or MERIDIAN stylized-logo-with-wave-device mark (U.S. Reg. No. 5,589,320), in any manner or form, in connection with the manufacture, advertising, promotion, offering for sale, sale, distribution, importation, or exportation of household cleaning products, cleaning preparations, or any other products or services in International Class 3.

B. Trade Dress

Using, displaying, reproducing, distributing, or otherwise employing any packaging, trade dress, labels, containers, signage, point-of-sale materials, or promotional materials that incorporate or display:

(i) a teal-and-white color scheme or color combination substantially similar to that currently used on Brindoval's "MERIDIAN FRESH" product line packaging, as depicted in Exhibits 4 through 9 to the Dominguez Declaration; or

(ii) a stylized wave device, wave design element, or any graphic device that is confusingly similar to Plaintiff's registered MERIDIAN wave-device logo as depicted in U.S. Registration No. 5,589,320,

in connection with the manufacture, advertising, promotion, offering for sale, sale, distribution, importation, or exportation of any household cleaning products, cleaning preparations, or any other products or services in International Class 3. For the avoidance of doubt, the prohibitions set forth in this Subsection B are not limited to the exact teal-and-white trade dress or the exact wave device currently used by Defendant, but extend to any trade dress or design elements that create a commercial impression confusingly similar to Plaintiff's registered marks and trade dress.

C. Internet and E-Commerce

Displaying, publishing, transmitting, causing to be displayed, or causing to be published the "MERIDIAN FRESH" mark, the teal-and-white trade dress described in Subsection B above, the wave device described in Subsection B above, or any confusingly similar mark, trade dress, or design element, on any website, mobile application, social media account or platform (including but not limited to Northpoint Services Inc., Kestrel Services Inc., Dunmore & Co., Fenmore Solutions, Pinterest, and Crowne Albany Partners LLC), online marketplace (including but not limited to Penmark Holdings, Walmart.com, and Adriatic Corporation), email marketing communication, or other digital or electronic medium, including but not limited to the website located at www.crestviewhomegoods.com, any Brindoval-affiliated or Brindoval-operated websites, and any third-party websites or platforms where Defendant offers products for sale or maintains a commercial presence.

D. Trademark Application

Taking any steps to advance, prosecute, or seek registration of United States Trademark Application Serial No. 97/412,558 for the mark MERIDIAN FRESH in International Class 3, or any other application to register a mark that is identical or confusingly similar to Plaintiff's MERIDIAN marks, during the pendency of this Order; provided, however, that Defendant shall not be required to abandon said application and shall be permitted to file such responses to Office Actions issued by the United States Patent and Trademark Office as may be minimally necessary to preserve the pendency of the application and to avoid the application being deemed abandoned, so long as Defendant does not affirmatively seek to advance the application to publication or registration during the pendency of this Order.

III. COMPLIANCE TIMELINE

Defendant shall comply fully with all provisions of this Order within forty-five (45) calendar days of the date of entry of this Order (the "Compliance Deadline"). Without limiting the generality of the foregoing, within forty-five (45) calendar days of the date of entry of this Order, Defendant shall take each of the following specific actions:

(a) Retail Removal. Remove all products bearing the "MERIDIAN FRESH" mark, teal-and-white trade dress, or wave device from the retail shelves, display areas, stockrooms, back-of-house areas, and all other areas accessible to or visible by customers in each and every one of Brindoval's 148 retail store locations nationwide;

(b) E-Commerce Removal. Remove all product listings, product pages, category pages, search results, and any other references to "MERIDIAN FRESH" branded products from www.crestviewhomegoods.com and from any other online sales channels, websites, mobile applications, or third-party marketplace platforms on which Defendant offers products for sale;

(c) Packaging and Inventory. Remove, cover, destroy, or otherwise render non-infringing all teal-and-white trade dress elements and wave device elements on any remaining inventory of MERIDIAN FRESH products in Defendant's possession, custody, or control, including but not limited to inventory held in warehouses, distribution centers, retail locations, and third-party fulfillment facilities. Defendant may, at its option, re-label or re-package such inventory with non-infringing packaging, re-brand such products under a non-infringing mark, or destroy such inventory;

(d) Advertising and Promotional Materials. Remove, take down, destroy, or otherwise cease displaying all in-store signage, advertising materials, promotional materials, point-of-sale displays, shelf tags, end-cap displays, circulars, flyers, catalogs, and any other physical or printed materials bearing the "MERIDIAN FRESH" mark, the teal-and-white color scheme, or the wave device in any Brindoval retail location, warehouse, distribution center, or other facility;

(e) Digital Advertising. Cease all digital advertising campaigns, paid search campaigns, social media advertising, email marketing campaigns, and any other online or electronic promotional activities that reference, display, or promote the "MERIDIAN FRESH" mark, the teal-and-white trade dress, or the wave device.

IV. COMPLIANCE REPORTING

Within fifty (50) calendar days of the date of entry of this Order — that is, no later than five (5) calendar days after the Compliance Deadline — Defendant shall file with the Clerk of this Court and serve upon Plaintiff's counsel of record a sworn declaration (the "Compliance Declaration") executed by a duly authorized officer of Brindoval Home Goods Inc. who has personal knowledge of the steps taken to comply with this Order. The Compliance Declaration shall:

(a) Confirm that Defendant has achieved full compliance with each and every provision of this Order, or, in the alternative, identify with specificity any provision with which Defendant has not yet achieved full compliance and state the reasons therefor and the date by which full compliance is expected;

(b) Describe in reasonable detail the specific steps and actions taken by Defendant and its agents to achieve compliance with each provision of Sections II and III of this Order, including but not limited to a description of the removal process undertaken at retail locations, the removal of online listings, the disposition of existing inventory, and the cessation of advertising and promotional activities;

(c) State the quantity of MERIDIAN FRESH products that were removed from retail shelves and online listings, and the quantity of MERIDIAN FRESH products remaining in Defendant's inventory, if any, together with a description of the disposition of such remaining inventory; and

(d) State whether Defendant has taken any action with respect to U.S. Trademark Application Serial No. 97/412,558 since the date of entry of this Order, and if so, describe the nature of such action.

V. BOND REQUIREMENT

Pursuant to Federal Rule of Civil Procedure 65(c), Plaintiff Meridian Consumer Brands LLC shall post security with the Clerk of this Court in the amount of Two Hundred Fifty Thousand Dollars ($250,000.00) to secure the payment of such costs and damages as may be incurred or suffered by Defendant Brindoval Home Goods Inc. in the event that Defendant is found to have been wrongfully enjoined or restrained by this Order.

The security required by this Section shall be posted within fourteen (14) calendar days of the date of entry of this Order. Failure to post the required security within the time specified may, upon application by Defendant, result in the dissolution of this Order.

The form of security shall be a surety bond issued by a surety company authorized to do business in the State of New York, an irrevocable standby letter of credit issued by a federally chartered banking institution, or a cash deposit with the Clerk of this Court, or any combination thereof, in a form and from an issuer acceptable to the Clerk. Plaintiff shall file proof of the posting of security with the Clerk and serve a copy thereof upon Defendant's counsel promptly upon posting.

VI. RESERVATION OF RIGHTS

Nothing in this Order shall be construed to preclude Plaintiff from seeking additional, modified, or expanded injunctive relief at any stage of this action, including but not limited to an expansion of the scope of this Order, the imposition of additional compliance requirements, or the seeking of a permanent injunction following trial or dispositive motion practice, based on developments in this action, newly discovered evidence, or changed circumstances.

Nothing in this Order shall be construed to preclude Defendant from moving to dissolve or modify this Order upon a showing of changed circumstances, newly discovered evidence, or other grounds recognized by law, pursuant to Federal Rule of Civil Procedure 62.1, the Court's inherent authority, or otherwise. Any such motion shall be made on notice to Plaintiff and supported by an appropriate evidentiary showing.

The entry of this Order shall not constitute an adjudication on the merits of any claim or defense in this action, and shall not be construed as a finding or determination of liability on the part of Defendant. This Order is issued solely on the basis of the preliminary record before the Court and the standards applicable to preliminary injunctive relief.

VII. SCOPE AND DURATION

This Order shall remain in full force and effect during the pendency of this action and shall continue until the entry of final judgment, further order of this Court modifying or dissolving this Order, or a written agreement of the parties approved by the Court providing for the modification, dissolution, or termination of this Order, whichever occurs first.

VIII. SERVICE

Plaintiff's counsel shall serve a true and correct copy of this Order, together with a copy of the Court's accompanying Memorandum Opinion and Order, upon Defendant's counsel of record:

Gregory T. Halverson, Esq. Halverson McKay & Pruitt LLP 225 South Sixth Street, Suite 4200 Minneapolis, Minnesota 55402

by overnight delivery, email, or personal service, within three (3) business days of the date of entry of this Order, and shall thereafter file a certificate of service with the Clerk of this Court confirming such service.

IX. CONSEQUENCES OF NONCOMPLIANCE

Failure by Defendant or any person bound by this Order to comply with any provision hereof may result in a finding of civil contempt of court and the imposition of appropriate sanctions, including but not limited to monetary penalties, compensatory contempt sanctions, coercive fines, attorneys' fees and costs incurred by Plaintiff in connection with any contempt proceedings, and such further injunctive or equitable relief as the Court may deem just and appropriate under the circumstances.

SO ORDERED.

Dated: New York, New York

______, 2022

________________________________________

HON. PATRICIA M. ALBRIGHT United States District Judge Southern District of New York

SUBMITTED ON BEHALF OF PLAINTIFF

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo Responsible Partner

Marcus Delgado Billing Partner

Christy Bauer Lead Associate

Peter Vassiliev Working Associate

1251 Avenue of the Americas, 40th Floor New York, New York 10020 Telephone: (212) 558-4000 Facsimile: (212) 558-3588

Attorneys for Plaintiff Meridian Consumer Brands LLC

C&H Matter No. 1011-00003

Dated: November 18, 2022

MERIDIAN CONSUMER BRANDS LLC, a Delaware limited liability company,

Plaintiff,

v.	Case No. 1:22-cv-09483-PMA
BRINDOVAL HOME GOODS INC., a Minnesota corporation,	Hon. Patricia M. Albright

United States District Judge

Defendant.

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
[PROPOSED] ORDER GRANTING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION
This matter comes before the Court on the Motion for Preliminary Injunction filed by Plaintiff Meridian Consumer Brands LLC ("MCB" or "Plaintiff") on November 18, 2022, pursuant to Federal Rule of Civil Procedure 65 and 15 U.S.C. § 1116(a).
The Court has considered the following submissions and materials in connection with the Motion: (i) Plaintiff's Memorandum of Law in Support of its Motion for Preliminary Injunction; (ii) the Declaration of Rachel Dominguez, Vice President of Brand Management at MCB, together with all exhibits attached thereto; (iii) the Declaration of Dr. Elaine Furman, Ph.D., of Lakeshore Brand Consulting LLC, including the consumer confusion survey report appended thereto as Exhibit A (the "Furman Survey"); (iv) all exhibits, appendices, and supplemental materials filed in connection with the foregoing submissions; and (v) any opposition papers, declarations, exhibits, and responsive materials filed by Defendant Brindoval Home Goods Inc. ("Brindoval" or "Defendant").
The Court has further considered the arguments and representations of counsel for the parties presented in the briefs and at the hearing held in connection with this Motion.
Having considered all of the foregoing, and for the reasons set forth herein and in the Court's accompanying Memorandum Opinion and Order of even date, the Court finds that Plaintiff has demonstrated each of the four elements required for the issuance of a preliminary injunction in this Circuit, namely: (1) a likelihood of success on the merits of its claims for federal trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for federal unfair competition and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for injury to business reputation and dilution under New York General Business Law § 360-l; (2) a likelihood of irreparable harm to Plaintiff in the absence of preliminary injunctive relief; (3) that the balance of hardships between the parties tips decidedly in Plaintiff's favor; and (4) that the issuance of a preliminary injunction is consistent with and in the public interest.
Accordingly, and for good cause shown, IT IS HEREBY ORDERED as follows:
I. FINDINGS SUPPORTING INJUNCTIVE RELIEF
1. Plaintiff MCB is the owner of the following valid and legally enforceable federal trademark registrations, each of which is registered on the Principal Register of the United States Patent and Trademark Office in International Class 3 (cleaning preparations):
(a) United States Registration No. 4,218,506 for the mark MERIDIAN in standard character form, registered on August 14, 2012, for "household cleaning preparations; all-purpose cleaning preparations; glass cleaning preparations; surface cleaning preparations" in International Class 3;
(b) United States Registration No. 5,034,771 for the mark MERIDIAN CLEAN in standard character form, registered on October 18, 2016, for "household cleaning preparations; multi-surface cleaning preparations; antibacterial cleaning preparations" in International Class 3; and
(c) United States Registration No. 5,589,320 for the mark MERIDIAN in stylized form together with a wave device (the "MERIDIAN Wave-Device Logo"), registered on July 10, 2018, for "household cleaning preparations; cleaning preparations for household use; all-purpose cleaners" in International Class 3.
2. Each of the foregoing registrations is valid, subsisting, and has not been abandoned, cancelled, or the subject of any successful challenge before the Trademark Trial and Appeal Board or any court of competent jurisdiction. The registrations are entitled to the presumptions afforded by 15 U.S.C. § 1057(b) and § 1115(a), including the presumptions of validity, ownership, and the exclusive right to use the registered marks in commerce in connection with the goods specified in the registrations.
3. MCB has used the MERIDIAN mark in interstate commerce in connection with the advertising, promotion, offering for sale, sale, and distribution of household cleaning products continuously and without interruption since approximately 2011. MCB's use of the MERIDIAN mark predates any use by Brindoval of the accused "MERIDIAN FRESH" mark by more than a decade.
4. MCB's MERIDIAN-branded household cleaning product line has achieved substantial commercial success and widespread consumer recognition. In Fiscal Year 2022, MCB's MERIDIAN-branded cleaning products generated approximately $94.5 million in net revenue. Over the period from 2011 through 2022, MCB has invested cumulative advertising and marketing expenditures of approximately $47.2 million in promoting the MERIDIAN brand and MERIDIAN-branded cleaning products through national television advertising, digital marketing campaigns, social media, print advertising, retail co-op advertising, and point-of-sale promotional materials. The evidence demonstrates that the MERIDIAN mark has acquired significant consumer recognition and goodwill in the household cleaning product market.
5. In or about July 2022, Defendant Brindoval launched a private-label household cleaning product line under the mark "MERIDIAN FRESH" in International Class 3. Brindoval's MERIDIAN FRESH products have been offered for sale and sold in all 148 Brindoval retail store locations across the United States and on Brindoval's e-commerce platform accessible at www.crestviewhomegoods.com. The MERIDIAN FRESH product line is sold in the same channels of trade and to the same classes of consumers as MCB's MERIDIAN-branded products, namely retail consumers of household cleaning preparations.
6. Brindoval's MERIDIAN FRESH packaging and trade dress employs a teal-and-white color scheme and a stylized wave device that are confusingly similar to MCB's registered trade dress elements and to the MERIDIAN stylized logo with wave device registered as U.S. Registration No. 5,589,320. The overall commercial impression created by the MERIDIAN FRESH packaging is strikingly similar to the overall commercial impression of MCB's MERIDIAN-branded cleaning product packaging, as demonstrated by the side-by-side comparison exhibits submitted with the Dominguez Declaration.
7. The consumer confusion survey conducted by Dr. Elaine Furman, Ph.D., of Lakeshore Brand Consulting LLC, employing a Squirt-design modified Eveready protocol and utilizing a sample of 612 respondents drawn from the relevant consumer population (adults who have purchased household cleaning products within the preceding twelve months), demonstrated a net confusion rate of 31.4%. The raw confusion rate among respondents exposed to the Brindoval MERIDIAN FRESH packaging was 38.6%, and the control-group noise rate was 7.2%, yielding a net confusion rate of 31.4% after subtraction of the control-group noise. The Court finds that a net confusion rate of 31.4% constitutes strong evidence of actual consumer confusion and is well above the threshold that courts in this Circuit have recognized as probative of a likelihood of confusion. See, e.g., Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986); McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 364 (3d Cir. 2007).
8. Applying the multifactor test for likelihood of confusion set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), the Court finds that Plaintiff has demonstrated a likelihood of confusion among consumers arising from Brindoval's use of the MERIDIAN FRESH mark and associated trade dress. In particular, the Court has considered and weighed: (a) the strength of MCB's MERIDIAN marks, which the evidence shows to be commercially strong based on extensive sales, advertising expenditures, and consumer recognition; (b) the degree of similarity between the MERIDIAN FRESH mark and MCB's MERIDIAN marks, which share the dominant term "MERIDIAN" with the addition of the merely descriptive or suggestive word "FRESH"; (c) the proximity and substantial overlap of the parties' goods, both of which fall squarely within International Class 3 cleaning preparations and are offered to the same consumers through overlapping retail channels; (d) the evidence of actual and likely consumer confusion as reflected in the Furman Survey results; (e) Defendant's apparent intent in adopting a mark incorporating the entirety of Plaintiff's well-known MERIDIAN mark; (f) the quality of Defendant's products; (g) the sophistication of the relevant consumers, who are ordinary retail purchasers exercising relatively low degrees of care in selecting household cleaning products; and (h) the likelihood that MCB may bridge the gap into Brindoval's specific market channels. The majority of these factors weigh strongly in Plaintiff's favor.
9. The Court further finds that Plaintiff has demonstrated a likelihood of irreparable harm in the absence of injunctive relief. Loss of control over one's trademark and the resulting injury to goodwill and brand reputation constitute irreparable harm that cannot be adequately remedied by an award of monetary damages. See 15 U.S.C. § 1116(a); Salinger v. Colting, 607 F.3d 68, 81 (2d Cir. 2010). Every day that Defendant continues to offer MERIDIAN FRESH products using confusingly similar branding, there is an ongoing and increasing risk that consumers will be confused as to the source, sponsorship, or affiliation of Defendant's products, which erodes the distinctiveness and commercial value of Plaintiff's marks and diminishes the goodwill that Plaintiff has built over more than a decade.
10. The balance of hardships tips in Plaintiff's favor. Although the Court recognizes that compliance with an injunction will require Defendant to incur costs in connection with re-branding its private-label cleaning product line, these costs are of Defendant's own making and are outweighed by the continuing and irreparable harm to Plaintiff's trademark rights, consumer goodwill, and brand equity. Defendant's private-label cleaning line has been on the market for approximately four months; Plaintiff's MERIDIAN brand has been in continuous use for more than eleven years.
11. The public interest favors the issuance of a preliminary injunction. The public has a strong interest in being free from confusion as to the source, sponsorship, and affiliation of consumer products, particularly in the household cleaning products market where product quality, safety, and efficacy are matters of legitimate consumer concern. Enforcement of trademark rights serves the public interest by preventing consumer deception and protecting the integrity of the marketplace. See Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012).
II. INJUNCTIVE RELIEF — PROHIBITED CONDUCT
IT IS HEREBY ORDERED that Defendant Brindoval Home Goods Inc., its officers, directors, agents, servants, employees, attorneys (including the law firm of Halverson McKay & Pruitt LLP and all attorneys associated therewith who are involved in this matter), successors, assigns, and all persons in active concert or participation with any of the foregoing who receive actual notice of this Order by personal service or otherwise, are ENJOINED and RESTRAINED, during the pendency of this action, from engaging in any of the following acts or conduct:
A. Mark Usage
Using, displaying, or otherwise employing the mark "MERIDIAN FRESH," or any other mark, name, designation, or trade name that is identical or confusingly similar to Plaintiff's MERIDIAN mark (U.S. Reg. No. 4,218,506), MERIDIAN CLEAN mark (U.S. Reg. No. 5,034,771), or MERIDIAN stylized-logo-with-wave-device mark (U.S. Reg. No. 5,589,320), in any manner or form, in connection with the manufacture, advertising, promotion, offering for sale, sale, distribution, importation, or exportation of household cleaning products, cleaning preparations, or any other products or services in International Class 3.
B. Trade Dress
Using, displaying, reproducing, distributing, or otherwise employing any packaging, trade dress, labels, containers, signage, point-of-sale materials, or promotional materials that incorporate or display:
(i) a teal-and-white color scheme or color combination substantially similar to that currently used on Brindoval's "MERIDIAN FRESH" product line packaging, as depicted in Exhibits 4 through 9 to the Dominguez Declaration; or
(ii) a stylized wave device, wave design element, or any graphic device that is confusingly similar to Plaintiff's registered MERIDIAN wave-device logo as depicted in U.S. Registration No. 5,589,320,
in connection with the manufacture, advertising, promotion, offering for sale, sale, distribution, importation, or exportation of any household cleaning products, cleaning preparations, or any other products or services in International Class 3. For the avoidance of doubt, the prohibitions set forth in this Subsection B are not limited to the exact teal-and-white trade dress or the exact wave device currently used by Defendant, but extend to any trade dress or design elements that create a commercial impression confusingly similar to Plaintiff's registered marks and trade dress.
C. Internet and E-Commerce
Displaying, publishing, transmitting, causing to be displayed, or causing to be published the "MERIDIAN FRESH" mark, the teal-and-white trade dress described in Subsection B above, the wave device described in Subsection B above, or any confusingly similar mark, trade dress, or design element, on any website, mobile application, social media account or platform (including but not limited to Northpoint Services Inc., Kestrel Services Inc., Dunmore & Co., Fenmore Solutions, Pinterest, and Crowne Albany Partners LLC), online marketplace (including but not limited to Penmark Holdings, Walmart.com, and Adriatic Corporation), email marketing communication, or other digital or electronic medium, including but not limited to the website located at www.crestviewhomegoods.com, any Brindoval-affiliated or Brindoval-operated websites, and any third-party websites or platforms where Defendant offers products for sale or maintains a commercial presence.
D. Trademark Application
Taking any steps to advance, prosecute, or seek registration of United States Trademark Application Serial No. 97/412,558 for the mark MERIDIAN FRESH in International Class 3, or any other application to register a mark that is identical or confusingly similar to Plaintiff's MERIDIAN marks, during the pendency of this Order; provided, however, that Defendant shall not be required to abandon said application and shall be permitted to file such responses to Office Actions issued by the United States Patent and Trademark Office as may be minimally necessary to preserve the pendency of the application and to avoid the application being deemed abandoned, so long as Defendant does not affirmatively seek to advance the application to publication or registration during the pendency of this Order.
III. COMPLIANCE TIMELINE
Defendant shall comply fully with all provisions of this Order within forty-five (45) calendar days of the date of entry of this Order (the "Compliance Deadline"). Without limiting the generality of the foregoing, within forty-five (45) calendar days of the date of entry of this Order, Defendant shall take each of the following specific actions:
(a) Retail Removal. Remove all products bearing the "MERIDIAN FRESH" mark, teal-and-white trade dress, or wave device from the retail shelves, display areas, stockrooms, back-of-house areas, and all other areas accessible to or visible by customers in each and every one of Brindoval's 148 retail store locations nationwide;
(b) E-Commerce Removal. Remove all product listings, product pages, category pages, search results, and any other references to "MERIDIAN FRESH" branded products from www.crestviewhomegoods.com and from any other online sales channels, websites, mobile applications, or third-party marketplace platforms on which Defendant offers products for sale;
(c) Packaging and Inventory. Remove, cover, destroy, or otherwise render non-infringing all teal-and-white trade dress elements and wave device elements on any remaining inventory of MERIDIAN FRESH products in Defendant's possession, custody, or control, including but not limited to inventory held in warehouses, distribution centers, retail locations, and third-party fulfillment facilities. Defendant may, at its option, re-label or re-package such inventory with non-infringing packaging, re-brand such products under a non-infringing mark, or destroy such inventory;
(d) Advertising and Promotional Materials. Remove, take down, destroy, or otherwise cease displaying all in-store signage, advertising materials, promotional materials, point-of-sale displays, shelf tags, end-cap displays, circulars, flyers, catalogs, and any other physical or printed materials bearing the "MERIDIAN FRESH" mark, the teal-and-white color scheme, or the wave device in any Brindoval retail location, warehouse, distribution center, or other facility;
(e) Digital Advertising. Cease all digital advertising campaigns, paid search campaigns, social media advertising, email marketing campaigns, and any other online or electronic promotional activities that reference, display, or promote the "MERIDIAN FRESH" mark, the teal-and-white trade dress, or the wave device.
IV. COMPLIANCE REPORTING
Within fifty (50) calendar days of the date of entry of this Order — that is, no later than five (5) calendar days after the Compliance Deadline — Defendant shall file with the Clerk of this Court and serve upon Plaintiff's counsel of record a sworn declaration (the "Compliance Declaration") executed by a duly authorized officer of Brindoval Home Goods Inc. who has personal knowledge of the steps taken to comply with this Order. The Compliance Declaration shall:
(a) Confirm that Defendant has achieved full compliance with each and every provision of this Order, or, in the alternative, identify with specificity any provision with which Defendant has not yet achieved full compliance and state the reasons therefor and the date by which full compliance is expected;
(b) Describe in reasonable detail the specific steps and actions taken by Defendant and its agents to achieve compliance with each provision of Sections II and III of this Order, including but not limited to a description of the removal process undertaken at retail locations, the removal of online listings, the disposition of existing inventory, and the cessation of advertising and promotional activities;
(c) State the quantity of MERIDIAN FRESH products that were removed from retail shelves and online listings, and the quantity of MERIDIAN FRESH products remaining in Defendant's inventory, if any, together with a description of the disposition of such remaining inventory; and
(d) State whether Defendant has taken any action with respect to U.S. Trademark Application Serial No. 97/412,558 since the date of entry of this Order, and if so, describe the nature of such action.
V. BOND REQUIREMENT
Pursuant to Federal Rule of Civil Procedure 65(c), Plaintiff Meridian Consumer Brands LLC shall post security with the Clerk of this Court in the amount of Two Hundred Fifty Thousand Dollars ($250,000.00) to secure the payment of such costs and damages as may be incurred or suffered by Defendant Brindoval Home Goods Inc. in the event that Defendant is found to have been wrongfully enjoined or restrained by this Order.
The security required by this Section shall be posted within fourteen (14) calendar days of the date of entry of this Order. Failure to post the required security within the time specified may, upon application by Defendant, result in the dissolution of this Order.
The form of security shall be a surety bond issued by a surety company authorized to do business in the State of New York, an irrevocable standby letter of credit issued by a federally chartered banking institution, or a cash deposit with the Clerk of this Court, or any combination thereof, in a form and from an issuer acceptable to the Clerk. Plaintiff shall file proof of the posting of security with the Clerk and serve a copy thereof upon Defendant's counsel promptly upon posting.
VI. RESERVATION OF RIGHTS
Nothing in this Order shall be construed to preclude Plaintiff from seeking additional, modified, or expanded injunctive relief at any stage of this action, including but not limited to an expansion of the scope of this Order, the imposition of additional compliance requirements, or the seeking of a permanent injunction following trial or dispositive motion practice, based on developments in this action, newly discovered evidence, or changed circumstances.
Nothing in this Order shall be construed to preclude Defendant from moving to dissolve or modify this Order upon a showing of changed circumstances, newly discovered evidence, or other grounds recognized by law, pursuant to Federal Rule of Civil Procedure 62.1, the Court's inherent authority, or otherwise. Any such motion shall be made on notice to Plaintiff and supported by an appropriate evidentiary showing.
The entry of this Order shall not constitute an adjudication on the merits of any claim or defense in this action, and shall not be construed as a finding or determination of liability on the part of Defendant. This Order is issued solely on the basis of the preliminary record before the Court and the standards applicable to preliminary injunctive relief.
VII. SCOPE AND DURATION
This Order shall remain in full force and effect during the pendency of this action and shall continue until the entry of final judgment, further order of this Court modifying or dissolving this Order, or a written agreement of the parties approved by the Court providing for the modification, dissolution, or termination of this Order, whichever occurs first.
VIII. SERVICE
Plaintiff's counsel shall serve a true and correct copy of this Order, together with a copy of the Court's accompanying Memorandum Opinion and Order, upon Defendant's counsel of record:
Gregory T. Halverson, Esq. Halverson McKay & Pruitt LLP 225 South Sixth Street, Suite 4200 Minneapolis, Minnesota 55402
by overnight delivery, email, or personal service, within three (3) business days of the date of entry of this Order, and shall thereafter file a certificate of service with the Clerk of this Court confirming such service.
IX. CONSEQUENCES OF NONCOMPLIANCE
Failure by Defendant or any person bound by this Order to comply with any provision hereof may result in a finding of civil contempt of court and the imposition of appropriate sanctions, including but not limited to monetary penalties, compensatory contempt sanctions, coercive fines, attorneys' fees and costs incurred by Plaintiff in connection with any contempt proceedings, and such further injunctive or equitable relief as the Court may deem just and appropriate under the circumstances.
SO ORDERED.
Dated: New York, New York
______, 2022
________________________________________
HON. PATRICIA M. ALBRIGHT United States District Judge Southern District of New York
SUBMITTED ON BEHALF OF PLAINTIFF
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo Responsible Partner
Marcus Delgado Billing Partner
Christy Bauer Lead Associate
Peter Vassiliev Working Associate
1251 Avenue of the Americas, 40th Floor New York, New York 10020 Telephone: (212) 558-4000 Facsimile: (212) 558-3588
Attorneys for Plaintiff Meridian Consumer Brands LLC
C&H Matter No. 1011-00003
Dated: November 18, 2022
MERIDIAN CONSUMER BRANDS LLC, a Delaware limited liability company,
Plaintiff,
v. | Case No. 1:22-cv-09483-PMA
BRINDOVAL HOME GOODS INC., a Minnesota corporation, | Hon. Patricia M. Albright
United States District Judge
Defendant.