throbber
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1199729
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`Filing date:
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`03/30/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex parte appeal
`no.
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`79283267
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`Appellant
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`Milk & Honey Distillery Ltd.
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`Applied for mark
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`MILK & HONEY DISTILLERY
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`Correspondence
`address
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`JOEL KARNI SCHMIDT
`COWAN, LIEBOWITZ & LATMAN, P.C.
`114 WEST 47TH STREET
`21ST FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: trademark@cll.com
`Secondary email(s): ejs@cll.com, jks@cll.com, trademark@cll.com
`212-790-9200
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`Submission
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`Attachments
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Motion for suspension
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`Motion to Suspend - 79283267.pdf(73135 bytes )
`ExA1.pdf(5716323 bytes )
`ExA2.pdf(4559517 bytes )
`ExA3.pdf(4278772 bytes )
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`Eric J. Shimanoff
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`ejs@cll.com, jks@cll.com, trademark@cll.com
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`/Eric J. Shimanoff/
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`03/30/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`---------------------------------------------------------------- X
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`In re Milk & Honey Distillery Ltd.
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`Ex Parte Appeal No. 79283267
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`For Mark: MILK & HONEY DISTILLERY
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`MOTION TO SUSPEND APPEAL PENDING
`RESOLUTION OF CIVIL LITIGATION
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`Pursuant to C.F.R. § 2.117(a) and TBMP § 510.02(a), Applicant Milk & Honey Distillery
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`Ltd. (“Applicant”) hereby moves to suspend this ex parte appeal concerning Applicant’s
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`Application Ser. No. 79283267 for the mark MILK & HONEY DISTILLERY (the “Subject
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`Mark”) for “Alcoholic beverages, namely, distilled spirits, whisky, and whisky-based
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`beverages” in International Class 33 pending the resolution of a litigation filed in the United
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`States District Court for the Eastern District of Wisconsin (the “Litigation”) by Applicant against
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`M&H Spirits, LLC (“Defendant”), seeking: (1) a declaration that Applicant’s marks M&H,
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`M&H WHISKEY DISTILLERY, MILK & HONEY DISTILLERY,
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` and
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`(“Applicant’s Marks”) do not infringe and are not likely to be confused with
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`Defendant’s marks MILK & HONEY, M&H, M&H Spirits and
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`(“Defendant’s Marks”); and (2) cancellation in whole or part of the following United States
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`trademark registrations for Defendant’s Marks:
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`(a)
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`Reg. No. 5200413 for the word mark MILK & HONEY for “Liquor and
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`liqueur beverages, namely, distilled spirits, liqueurs, and prepared alcoholic
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`drinks” in International Class 33 (the “413 Registration”);
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`(b)
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`Reg. No. 6182398 for the stylized mark
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`for “Liquor and
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`liqueur beverages, namely, distilled spirits, liqueurs, and prepared alcoholic
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`drinks” in International Class 33 (the “398 Registration”); and
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`(c)
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`Reg. No. 5229644 for the word mark M&H for “Liquor and liqueur beverages,
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`namely, distilled spirits,
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`liqueurs, and prepared alcoholic drinks”
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`in
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`International Class 33 (the “644 Registration”).
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`A copy of the Complaint in the Litigation is attached hereto as Exhibit A.
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`Pursuant to 37 C.F.R. § 2.117, “[w]henever it shall come to the attention of the
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`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a
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`civil action . . . which may have a bearing on the case, proceedings before the Board may be
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`suspended until termination of the civil action . . . .” See also TBMP § 510.02(a). The
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`Board routinely grants motions to suspend opposition proceedings pending the outcome of a
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`civil action where issues of trademark infringement, unfair competition and cancellation are
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`raised because such civil actions may be dispositive of or significantly affect the proceedings
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`before the Board. TBMP § 510.02(a). See also The Other Tel. Co. v. Connecticut Nat’l Tel.
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`Co. Inc., 181 U.S.P.Q. 125, 126 (TTAB 1974) (suspending opposition proceeding during
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`pendency of district court action where Opposer was seeking to enjoin Applicant from using
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`the mark at issue in the opposition proceeding) and cases cited therein.
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`The instant ex parte appeal concerns the Examining Attorney’s refusal to register the
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`Subject Mark under Lanham Act Section 2(d), 15 U.S.C. § 1052(d), based on a purported
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`likelihood of confusion with Defendant’s 413 Registration and Defendant’s 398 Registration.
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`The Litigation seeks: (1) a declaration inter alia that the Subject Mark is not likely to cause
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`confusion with or infringe upon the marks that are the subject of Defendant’s 413
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`Registration and Defendant’s 398 Registration; and (2) cancellation in whole or part of the
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`same registrations. Thus, the Court’s determination in the Litigation will bear upon the
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`issues in the current appeal.
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`CONCLUSION
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`Based on the foregoing, Applicant respectfully requests the Board suspend this ex
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`parte appeal pending final resolution of the Litigation.
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`Dated: New York, New York
`March 30, 2022
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`Respectfully submitted,
`COWAN, LIEBOWITZ & LATMAN, P.C.
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`
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`/Eric J. Shimanoff/
`By:
`Eric J. Shimanoff (ejs@cll.com)
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`Joel Karni Schmidt (jks@cll.com)
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`114 West 47th Street
`New York, NY 10036-1525
`(212) 790-9200
`Attorneys for Applicant
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` 32662/001/4036273
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`3
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`MOTION TO SUSPEND APPEAL PENDING
`RESOLUTION OF CIVIL LITIGATION
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`EXHIBIT A
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`Part 1 of 3
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`

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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF WISCONSIN
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`---------------------------------------------------------------- x
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`MILK & HONEY DISTILLERY LTD.,
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`Plaintiff,
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`-against-
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`M&H SPIRITS, LLC,
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`Defendant.
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`---------------------------------------------------------------- x
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`2:22-cv-397
`Civil Action No. _______________
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`COMPLAINT
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`JURY TRIAL DEMANDED
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`Plaintiff Milk & Honey Distillery Ltd. (“Plaintiff”), by and through its undersigned
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`attorneys, as and for its declaratory judgment Complaint against Defendant M&H Spirits
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`(“Defendant”), alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`Plaintiff brings this action under the Declaratory Judgment Act, 28 U.S.C. §§ 2201
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`and 2202, and the trademark laws of the United States (Lanham Act of 1946), 15 U.S.C. § 1051 et
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`seq., as well as corresponding state law.
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`2.
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`Plaintiff seeks a declaration that Plaintiff’s use of its marks M&H, M&H
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`WHISKEY DISTILLERY and MILK & HONEY DISTILLERY in connection with whiskey and
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`gin has not and does not infringe, violate, or impinge upon in any manner Defendant’s claimed
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`rights in its marks M&H and MILK & HONEY for cream liqueur. In light of all marketplace
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`conditions, including the vast and obvious dissimilarities between the parties’ respective trade
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`dress, as shown below, no reasonable consumer will mistakenly believe that Plaintiff’s spirits
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`originate from the same source as or has any affiliation with Defendant’s cream liqueur.
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` 00001/348/4031870
`Case 2:22-cv-00397 Filed 03/30/22 Page 1 of 23 Document 1
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`Plaintiff’s Whiskey
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`Defendant’s Cream Liqueur
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`3.
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`Plaintiff also seeks cancellation of Defendant’s registrations for its MILK &
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`HONEY marks on the grounds that such marks are merely descriptive of its cream liqueur and
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`have not acquired distinctiveness through secondary meaning; and, in the alternative for
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`Defendant’s MILK & HONEY marks and in the first instance for Defendant’s M&H mark,
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`Plaintiff seeks partial cancellation of Defendant’s registrations on the ground that Plaintiff’s marks
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`have only been used for cream liqueur sold in Massachusetts, Wisconsin, and New Hampshire.
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`THE PARTIES
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`4.
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`Plaintiff is a limited company organized and existing under the laws of Israel with
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`an address at 16 Hatchiya Street, Tel Aviv, 6423201, Israel.
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`5.
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`Upon information and belief, Defendant is a limited liability company organized
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`and existing under the laws of Wisconsin with a principal place of business at 3260 North 53rd
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` 00001/348/4031870
`Case 2:22-cv-00397 Filed 03/30/22 Page 2 of 23 Document 1
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`-2-
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`Street, Milwaukee, Wisconsin 53216 and a registered agent c/o Justin Lubin, 1961 West Windsor
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`Circle, Glendale, Wisconsin 53209.
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`JURISDICTION AND VENUE
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`6.
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`This Court has jurisdiction under 28 U.S.C. §§ 2201 and 2202 to declare the rights
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`of any party seeking such declaration, under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338
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`over Plaintiff’s claims arising under the Lanham Act and under 28 U.S.C. § 1367 over Plaintiff’s
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`claims arising under state law.
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`7.
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`Venue is proper in this District under 28 U.S.C. § 1391(b).
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`FACTUAL ALLEGATIONS
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`Plaintiff and its Marks
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`8.
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`9.
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`Plaintiff owns and operates Israel’s first whiskey distillery.
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`Plaintiff distills in Israel and sells in Israel and other countries, including the United
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`States, whisky and gin (“Plaintiff’s Spirits”) under the names and marks M&H, M&H WHISKEY
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`DISTILLERY, MILK & HONEY DISTILLERY,
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` and
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`(“Plaintiff’s
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`Marks”).
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`10.
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`Plaintiff promotes Plaintiff’s Spirits under Plaintiff’s Marks inter alia via the
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`website located at www.mh-distillery.com, including as shown in Exhibit A hereto.
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`11.
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`Plaintiff’s Spirits under Plaintiff’s Marks almost always are sold in bottles and/or
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`boxes identical or nearly identical to those shown below:
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`Case 2:22-cv-00397 Filed 03/30/22 Page 3 of 23 Document 1
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`Case 2:22-cv-00397 Filed 03/30/22 Page 4 of 23 Document 1
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`Case 2:22-cv-00397 Filed 03/30/22 Page 6 of 23 Document 1
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`(“Plaintiff’s Trade Dress”).
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`12.
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`Plaintiff’s Trade Dress for all of Plaintiff’s Spirits includes: (a) a glass bottle with
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`a wide squarish body with high distinctive shoulders; (b) a label that does not cover the entire
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`bottle such that a significant portions of the alcohol therein is visible through the glass bottle; and
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`(c) the prominent use of a striped bull logo
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`(in black and yellow, grey and yellow or
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`grey and black) (the “Striped Bull Logo”).
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`13.
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`Plaintiff’s Trade Dress for its Classic, Elements and Apex whiskies also includes:
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`(a) the prominent use of the word CLASSIC, APEX or ELEMENTS in all caps with the term
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`“single malt whisky” presented in italics thereunder; (b) a bottle that is indented in the shape of a
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`large trapezium with the embossed mark “M&H” in a circle right below the neck; (c) a label that
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`also is shaped like a trapezium that sits inside the indentation of the bottle and is presented in one
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`or more colors (the labels on the Apex whiskies have a split label with the bottom label in a color)
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`Case 2:22-cv-00397 Filed 03/30/22 Page 7 of 23 Document 1
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`-7-
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`and has multi-lined banner across the top; (d) a bottle that expands slightly to a block at the base;
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`(e) often a box for the bottle, which box also prominently displays the Striped Bull Logo and
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`contains one or more diagonal banners.
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`14.
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`Plaintiff’s Trade Dress for its Young Single Malt (Last One) and Whiskey in Bloom
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`whiskies also includes: (a) the Striped Bull Logo in a tear ribbon in the upper left of the label; (b)
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`a square label in one or more colors; (c) a label that prominently features multi-colored diagonal
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`banners; (d) prominent use of the terms YOUNG SINLGE MALT, WHISKEY IN BLOOM,
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`and/or THE LAST ONE; and (e) images of the striped bull on the seal around the bottle neck.
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`15.
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`Plaintiff’s Trade Dress for its Levantine Gin also includes: (a) the Striped Bull Logo
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`in a tear ribbon in the upper left-hand corner of the label; (b) a square label in one or more colors;
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`(c) prominent use of the terms GIN and LEVANTINE; and (e) images of the striped bull on the
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`seal around the bottle neck.
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`16.
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`Plaintiff’s Spirits under Plaintiff’s Marks typically retail for approximately $50 to
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`$150 per 750 ml bottle.
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`17.
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`Plaintiff’s Spirits under Plaintiff’s Marks always contain at least 46% alcohol by
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`volume.
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`18.
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`Plaintiff is the owner of the following U.S. trademark applications:
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`(a)
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`App. Serial No. 79283289 for the mark
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`for “Alcoholic
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`beverages, namely, distilled spirits, whisky, and whisky-based beverages,
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`none of the aforesaid products containing or mixed with energy drinks or
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`Case 2:22-cv-00397 Filed 03/30/22 Page 8 of 23 Document 1
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`formulated caffeinated drinks; none of the aforesaid products containing or
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`mixed with energy drinks or formulated caffeinated drinks” in International
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`Class 33, filed under Lanham Act Section 66(a), with a filing date of
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`December 23, 2019 and a priority date of July 9, 2019 (the “289
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`Application”);
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`(b)
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`App. Serial No. 79283305 for
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`the word mark M&H WHISKY
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`DISTILLERY for “Alcoholic beverages, namely, distilled spirits, whisky,
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`and whisky-based beverages” in International Class 33, filed under Lanham
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`Act Section 66(a), with a filing date of December 23, 2019 and a priority
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`date of July 9, 2019 (the “305 Application”); and
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`(c)
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`App. Serial No. 79283267 for the word mark MILK & HONEY
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`DISTILLERY for “Alcoholic beverages, namely, distilled spirits, whisky,
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`and whisky-based beverages” in International Class 33, filed under Lanham
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`Act Section 66(a), with a filing date of December 23, 2019 and a priority
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`date of July 9, 2019 (the “267 Application,” and with the 289 Application
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`and the 305 Application, “Plaintiff’s Applications”).
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`Defendant and its Marks
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`19.
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`Upon information and belief, Defendant manufactures and sells cream liqueur
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`(“Defendant’s Cream Liqueur”) under the names and marks MILK & HONEY, M&H, M&H
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`Spirits and
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` (“Defendant’s Marks”).
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`Case 2:22-cv-00397 Filed 03/30/22 Page 9 of 23 Document 1
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`20.
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`Upon information and belief, Defendant promotes Defendant’s Cream Liqueur
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`under Defendant’s Marks inter alia via the website located at www.realmilkandhoney.com
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`(“Defendant’s Website”), including as shown in Exhibit B hereto.
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`21.
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`Upon information and belief, Defendant’s Cream Liqueur under Defendant’s
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`Marks is sold in liquor stores only in Wisconsin, New Hampshire and Massachusetts.
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`22.
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`Upon information and belief, Defendant’s Cream Liqueur is sold only in the bottle
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`shown below:
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`(“Defendant’s Trade Dress”).
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`23.
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`Defendant’s Trade Dress contains at least: (a) a bottle in a shape known as a
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`“Burgundy” wine bottle with a cylindrical shape with no indentations or embossing, with graceful,
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`light sloping shoulders beginning approximately halfway up the bottle, and a prominent neck that
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`accounts for approximately 1/3 of the bottle; (b) a label that covers the entire bottle; (c) a label
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`Case 2:22-cv-00397 Filed 03/30/22 Page 10 of 23 Document 1
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`with a background that is nearly all white but changes to black near the beginning of the neck of
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`the bottle with a black tear drop shape seeming to fall from the center of the bottle at the neck; (d)
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`the mark MILK & HONEY presented in black in a thick all caps font centered on the vertical axis
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`of the bottle, with the word MILK above the word HONEY and the & between MILK and HONEY
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`with horizontal lines stemming from each side of the & reaching until approximately the ends of
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`the word MILK; (e) a large fan-shaped palm frond with dates at the center bottom of the frond, all
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`in black and appearing directly above the words MILK & HONEY; (f) the phrase “DIVINE
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`ORIGINAL” in black in all caps in a font smaller than that of “MILK & HONEY” but framed on
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`the top and bottom by horizontal lines and on the sides by stars or plus symbols; and (g) the term
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`“CREAM LIQUEUR” in black plain non-italicized font below the seal.
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`24.
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`Upon information and belief, Defendant’s Cream Liqueur under Defendant’s
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`Marks typically retails for approximately $25 to $35 per 750 ml bottle.
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`25.
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`Upon information and belief, Defendant’s Cream Liqueur under Defendant’s
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`Marks typically contains approximately 12.5% alcohol by volume.
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`26.
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`Upon information and belief, Defendant is the owner of record of the following
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`U.S. trademark registrations:
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`(a)
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`Reg. No. 5200413 for the word mark MILK & HONEY for “Liquor and
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`liqueur beverages, namely, distilled spirits, liqueurs, and prepared alcoholic
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`drinks” in International Class 33, with a registration date of May 9, 2017
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`and a claimed date of first use of March 22, 2017 (the “413 Registration”),
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`which it has recorded with U.S. Customs & Border Protection (“CBP”)
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`under Trademark Customs Recordation No. TMK 17-00817;
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`(b)
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`Reg. No. 6182398 for the stylized mark
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`for “Liquor and
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`liqueur beverages, namely, distilled spirits, liqueurs, and prepared alcoholic
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`drinks” in International Class 33, with a registration date of October 27,
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`2020 and a claimed date of first use of March 22, 2017 (the “398
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`Registration”); and
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`(c)
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`Reg. No. 5229644 for the word mark M&H for “Liquor and liqueur
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`beverages, namely, distilled spirits, liqueurs, and prepared alcoholic drinks”
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`in International Class 33, with a registration date of June 20, 2017 and a
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`claimed date of first use of March 22, 2017 (the “644 Registration,” and
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`with the 413 Registration and the 398 Registration, “Defendant’s
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`Registrations”), which it has recorded with CBP under Trademark Customs
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`Recordation No. TMK 21-00163.
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`The Descriptive Nature of Defendant’s Marks
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`27.
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`Upon information and belief, Defendant’s marks MILK & HONEY and
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`(“Defendant’s MILK & HONEY Marks”) are merely descriptive and have not
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`acquired distinctiveness through secondary meaning.
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`28.
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`Upon information and belief, Defendant’s MILK & HONEY Marks describe the
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`ingredients, characteristics, quality, function, purpose and/or use of Defendant’s Cream Liqueur.
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`29.
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`Upon information and belief, the ingredients in Defendant’s Cream Liqueur are
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`light cream, neutral grain spirits and date honey. Upon information and belief, cream is a type of
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`milk product or a product derived from milk; specifically, cream is the fatty part of non-
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`homogenized (or raw) milk that floats to the top and is then skimmed and extracted for use.
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`Because Defendant’s MILK & HONEY Marks immediately describe two of the three ingredients
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`of Defendant’s Cream Liqueur, the marks are merely descriptive.
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`30.
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`Upon information and belief, “Milk & Honey” (or “Milk and Honey”) is the name
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`of a type of cocktail not unique to any one source that is made with milk and/or cream, spirits and
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`a sweetener, such as honey, which are the precise ingredients in Defendant’s Liqueur, further
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`showing that Defendant’s MILK & HONEY Marks are merely descriptive.
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`31.
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`Upon information and belief, the addition of the large fan-shaped palm frond with
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`dates at the center bottom of the frond in Plaintiff’s mark
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` is a literal representation of
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`the dates from which the honey in Defendant’s Cream Liqueur is extracted and thus is descriptive
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`itself and does not make the overall mark any less descriptive.
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`32.
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`Upon information and belief, Defendant is aware that Defendant’s MILK &
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`HONEY Marks are merely descriptive and therefore Defendant itself advertises Defendant’s
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`Cream Liqueur as “THE REAL MILK & HONEY” on Defendant’s Website:
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`Case 2:22-cv-00397 Filed 03/30/22 Page 13 of 23 Document 1
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`33.
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`Upon information and belief, Defendant’s MILK & HONEY Marks have not
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`acquired distinctiveness through secondary meaning, including because Defendant’s sales,
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`advertising, marketing, and promotion of Defendant’s Cream Liqueur under Defendant’s MILK
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`& HONEY Marks all have been minimal in scope and time and because Defendant’s MILK &
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`HONEY Marks have received very little unsolicited attention in the media.
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`Plaintiff’s Pending Applications for Plaintiff’s Marks
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`34.
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`As noted above, Plaintiff has filed three trademark applications with the United
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`States Patent and Trademark Office (“USPTO”) seeking to register Plaintiff’s Marks. The USPTO
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`has refused to register to all three of Plaintiff’s Applications based on Defendant’s Registrations.
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`Specifically, the USPTO has refused to register:
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`(a)
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`Plaintiff’s 289 Application for the mark
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`under Lanham Act
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`Section 2(d), 15 U.S.C. § 1052(d), based on a purported likelihood of
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`confusion with Defendant’s 644 Registration for the mark M&H;
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`(b)
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`Plaintiff’s 305 Application for the mark M&H WHISKY DISTILLERY
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`under Lanham Act Section 2(d), 15 U.S.C. § 1052(d), based on a purported
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`likelihood of confusion with Defendant’s 644 Registration for the mark
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`M&H; and
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`(c)
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`Plaintiff’s 267 Application for the mark MILK & HONEY DISTILLERY
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`under Lanham Act Section 2(d), 15 U.S.C. § 1052(d), based on a purported
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`likelihood of confusion with Defendant’s 413 Registration for the mark
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`Case 2:22-cv-00397 Filed 03/30/22 Page 14 of 23 Document 1
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`MILK & HONEY and Defendant’s 398 Registration for the mark
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`.
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`35.
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`Plaintiff has appealed to the Trademark Trial and Appeal Board (“TTAB”) the
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`USPTO’s refusals to register all three of Plaintiff’s Applications, which appeals are pending.
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`36.
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`Concurrent with filing this Complaint, Plaintiff intends to request the TTAB
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`suspend all three appeals pending a final determination of this civil litigation.
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`Defendant’s Cease-and-Desist Demands to Plaintiff
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`37.
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`Defendant has made demands to Plaintiff, objecting to Plaintiff’s use and
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`registration of Plaintiff’s Mark in connection with Plaintiff’s Spirits and threatening to take legal
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`action against Plaintiff and Plaintiff’s Marks.
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`38.
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`On July 28, 2020, counsel for Defendant sent to Plaintiff a letter, claiming
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`Defendant had prior nationwide registered and common law trademark rights in Defendant’s
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`Marks, citing two of Defendant’s Registrations, objecting to Plaintiff’s use of Plaintiff’s Mark for
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`Plaintiff’s Spirits in the United States, asserting that Plaintiff’s use of Plaintiff’s Marks for
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`Plaintiff’s Spirits in the United States was likely to cause consumer confusion with Defendant’s
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`Marks, citing the USPTO’s initial rejection of Plaintiff’s Applications in light of Defendant’s
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`Registrations, claiming Plaintiff’s use of Plaintiff’s Marks for Plaintiff’s Spirits constituted willful
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`trademark infringement in violation of the Lanham Act, demanding that Plaintiff “immediately
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`cease and desist all use of” Plaintiff’s marks in connection with Plaintiff’s Spirits, claiming
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`Plaintiff was entitled to injunctive relief and damages under the Lanham Act and threatening that
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`Plaintiff was “prepared to take any and all available actions at law to enforce its trademark rights
`
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`-15-
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`in the United States.” Defendant also copied on the July 28, 2020 demand letter Impex Beverages,
`
`Inc., an importer of Plaintiff’s Spirits under Plaintiff’s Marks in the United States. A true and
`
`correct copy of Defendant’s July 28, 2020 demand letter is attached hereto as Exhibit C.
`
`39.
`
`On September 21, 2020, counsel for Plaintiff sent to Defendant’s counsel a letter in
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`response to Defendant’s July 28, 2020 demand letter, disputing and denying Defendant’s claims,
`
`including of likely confusion, and refusing to comply with Defendant’s demands. A true and
`
`correct copy of Plaintiff’s September 21, 2020 letter is attached hereto as Exhibit D.
`
`40.
`
`Defendant also has objected to Plaintiff’s use and registration of Plaintiff’s Marks
`
`for Plaintiff’s Spirits since the initial July 28, 2020 letter and has pointed to its CBP trademark
`
`recordations, which could block the importation of Plaintiff’s Spirits into the U.S.
`
`41. Most recently, on January 6, 2022, Defendant sent an email to Plaintiff, threatening
`
`that Defendant was prepared to “immediately proceed with enforcing our trademark rights against
`
`[Plaintiff].”
`
`42.
`
`Defendant’s allegations have created significant uncertainty as to Plaintiff’s ability
`
`to continue to use and to register Plaintiff’s Marks without objection from Defendant.
`
`43. Moreover, Defendant’s allegations against Plaintiff have created an actual,
`
`substantial, immediate, and real controversy between Plaintiff and Defendant concerning
`
`Plaintiff’s right to continue to use and to register Plaintiff’s Marks and Defendant’s rights in its
`
`own marks.
`
`44.
`
`A valid and justiciable case or controversy thus has arisen and exists between
`
`Plaintiff and Defendant within the meaning of 28 U.S.C. § 2201.
`
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`45.
`
`A judicial determination is necessary to determine Defendant’s purported
`
`trademark rights and the issue of non-infringement, no false designation of origin and no unfair
`
`competition under federal and/or state law.
`
`46.
`
`A judgment would serve a useful purpose in settling the legal issues, and a judgment
`
`would resolve the controversy and offer relief from uncertainty.
`
`The Lack of Likely Confusion between the Parties’ Respective Marks
`
`47.
`
`Upon information and belief, the vast differences between the Plaintiff’s Trade
`
`Dress and Defendant’s Trade Dress conclusively shows confusion between the parties’ marks and
`
`goods is not likely. Such differences include, without limitation and as shown below: the shapes
`
`of the parties’ respective bottles; the type of labels used on the parties’ respective bottles (full
`
`covering for Defendant versus partial covering for Defendant); the colors used on the parties’
`
`respective labels; the prominent use by Plaintiff of Plaintiff’s Striped Bull Logo; the prominent
`
`use by Defendant of a large fan-shaped palm frond with dates at the center bottom of the frond;
`
`the different locations on the parties’ labels in which their respective marks appear; Plaintiff’s use
`
`of the mark MILK & HONEY prominently on the front center of its label (and Defendant’s lack
`
`of the use of that mark on the front of its label); Defendant’s use of the mark M&H WHISKEY
`
`DISTILLERY prominently on its label (and Defendant’s lack of use of that mark or any M&H
`
`mark on the front of its label); and Plaintiff’s use of diagonal banners on most of its labels.
`
` 00001/348/4031870
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`-17-
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`

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`Plaintiff’s Trade Dress
`
`
`Defendant’s Trade Dress
`
`
`
`
`
`48.
`
`Upon information and belief, the differences between the parties’ products, namely,
`
`cream liqueur, on the one hand, and gin and whiskey, on the other hand, and the vastly different
`
`alcohol by volume content therein, further shows confusion between the parties’ marks and goods
`
`is not likely.
`
`49.
`
`Upon information and belief, the significant differences between the retail price of
`
`the parties’ products further show confusion between the parties’ marks and goods is not likely.
`
`50.
`
`Upon information and belief, the higher price point of the parties’ goods will cause
`
`consumers to exercise more case in making their purchasing decisions, further showing confusion
`
`between the parties’ marks and goods is not likely.
`
`51.
`
`Upon information, consumers of the parties’ products tend to be older, wealthier
`
`and better educated. Such a high level of sophistication among the consumer base for the parties’
`
`products further shows confusion between the parties’ marks and goods is not likely.
`
`52.
`
`Upon information and belief, the parties’ products are not “impulse” items in that
`
`consumers will take time and care examining the parties’ products and marks before making
`
` 00001/348/4031870
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`-18-
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`

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`purchasing decisions, further showing confusion between the parties’ marks and goods is not
`
`likely.
`
`53.
`
`Plaintiff is unaware of any specific instances of actual confusion between the
`
`parties, their products or their marks, despite their co-existence in the marketplace, further showing
`
`confusion between the parties’ marks and goods is not likely.
`
`54.
`
`Upon information and belief, and as set forth above, Defendant’s MILK & HONEY
`
`Marks are descriptive and thus conceptually weak, further showing confusion between the parties’
`
`marks and goods is not likely.
`
`55.
`
`Upon information and belief, several third parties use marks or names containing
`
`or comprising “Milk & Honey” in connection with alcoholic beverages and related goods and
`
`services, further weakening the commercial strength of Defendant’s Marks and also showing that
`
`consumers will exercise care and look to other product attributes and trade dress to distinguish
`
`from among various goods when making purchasing decisions, further showing confusion between
`
`the parties’ marks and goods is not likely.
`
`56.
`
`Plaintiff acted in good faith, adopting Plaintiff’s Marks in Israel years before
`
`Defendant began using or sought to register Defendant’s Marks in connection with Defendant’s
`
`Cream Liqueur, further showing confusion between the parties’ marks and goods is not likely.
`
`57.
`
`Upon information and belief, Defendant’s Cream Liqueur and Plaintiff’s Spirits are
`
`and will be sold in different sections of stores that sell alcoholic beverages and such sections
`
`typically will be labeled by the product type, further showing confusion between the parties’ marks
`
`and goods is not likely.
`
`58.
`
`Upon information and belief, Defendant’s Marks are commercially weak, including
`
`because Defendant’s sales, advertising, marketing, and promotion of Defendant’s Cream Liqueur
`
` 00001/348/4031870
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`-19-
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`under Defendant’s Marks all have been minimal in scope and time, especially compared to
`
`competitors, and because Defendant’s Marks have received very little unsolicited attention in the
`
`media. The commercial weakness of Defendant’s Marks further shows confusion between the
`
`parties’ marks and goods is not likely.
`
`FIRST CLAIM FOR RELIEF
`
`(DECLARATORY JUDGMENT FOR NON-INFRINGEMENT, NO FALSE
`
`DESIGNATION OF ORIGIN AND NO UNFAIR COMPETITION)
`
`59.
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1-58 above,
`
`with the same force and effect as if set forth herein.
`
`60.
`
`A valid and justiciable controversy has arisen and exists between Plaintiff and
`
`Defendant within the meaning of 28 U.S.C. § 2201 concerning Plaintiff’s use and registration of
`
`Plaintiff’s Marks and the scope and validity of Defendant’s Marks.
`
`61.
`
`Plaintiff’s Marks do not infringe Defendant’s Marks pursuant to Section 32(1) of
`
`the Lanham Act, 15 U.S.C. § 1114(1) because inter alia and as set forth above, Defendant’s MILK
`
`& HONEY Marks are merely descriptive and have not acquired distinctiveness through secondary
`
`meaning and Plaintiff’s Marks for Plaintiff’s Spirits do not cause a likelihood of confusion as to
`
`source, sponsorship or affiliation with respect to Defendant’s Marks for Defendant’s Cream
`
`Liqueur.
`
`62.
`
`Plaintiff’s Marks do not constitute false designation of origin pursuant to Section
`
`43(a) of the Lanham Act, 15 U.S.C. § 1125(a) because inter alia and as set forth above,
`
`Defendant’s MILK & HONEY Marks are merely descriptive and have not acquired distinctiveness
`
`through secondary meaning and Plaintiff’s Marks for Plaintiff’s Spirits do not cause a likelihood
`
` 00001/348/4031870
`Case 2:22-cv-00397 Filed 03/30/22 Page 20 of 23 Document 1
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`-20-
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`of confusion as to source, sponsorship, or affiliation with respect to Defendant’s Marks for
`
`Defendant’s Cream Liqueur.
`
`63.
`
`Plaintiff’s Marks do not constitute unfair competition or trademark infringement
`
`pursuant to state law because inter alia and as set forth above, Defendant’s MILK & HONEY
`
`Marks are merely descriptive and have not acquired distinctiveness through secondary meaning
`
`and Plaintiff’s Marks for Plaintiff’s Spirits do not cause a likelihood of confusion as to source,
`
`sponsorship, or affiliation with respect to Defendant’s Marks for Defend

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