Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA464025
`ESTTA Tracking number:
`03/27/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203891
`Defendant
`1-800-Flowers.com, Inc.
`THOMAS M GALGANO
`GALGANO & ASSOCIATES PLLC
`20 W PARK AVE STE 204
`LONG BEACH, NY 11561-2019
`UNITED STATES
`Other Motions/Papers
`James W. Faris
`jfaris@ktslaw.com,jpowell@ktslaw.com,tmadmin@ktslaw.com,lcrumbley@ktsla
`w.com
`/James W. Faris/
`03/27/2012
`Part 1.pdf ( 50 pages )(939065 bytes )
`Part 2.pdf ( 51 pages )(2641847 bytes )
`Part 3.pdf ( 55 pages )(273658 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
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`EDIBLE ARRANGEMENTS, LLC
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`v.
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`1-800-FLOWERS.COM, INC.
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`Applicant.
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` Opposition No. 91203846
` Mark: FRUIT BOUQUETS & Design
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` Opposition No. 91203866
` Mark: FRUIT BOUQUETS BY
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`1800FLOWERS.COM & Design
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` Opposition No. 91203868
` Mark: FRUIT BOUQUETS & Design
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` Opposition No. 91203873
` Mark: FRUIT BOUQUETS.COM
` & Design
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` Opposition No. 91203891
` Mark: FRUIT BOUQUETS.COM
` & Design
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` Opposition No. 91203907
` Mark: FRUIT BOUQUETS BY
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`1800FLOWERS.COM & Design
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`
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`APPLICANT’S MOTION TO CONSOLIDATE OPPOSITION PROCEEDINGS AND
`TO SUSPEND THE CONSOLIDATED OPPOSITION PROCEEDING
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`Pursuant to Rule 42(a) of the Federal Rules of Civil Procedure, 37 C.F.R. § 2.104(b), and
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`
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`T.B.M.P § 511, Applicant 1-800-Flowers.com, Inc. (“Applicant”) hereby moves the Board to
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`consolidate Opposition Nos. 91203846 (FRUIT BOUQUETS & Design), 91203866 (FRUIT
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`BOUQUETS BY 1800FLOWERS.COM & Design), 91203868 (FRUIT BOUQUETS &
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`Design), 91203873 (FRUIT BOUQUETS.COM & Design), 91203891 (FRUIT
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`BOUQUETS.COM & Design), and 91203907 (FRUIT BOUQUETS BY 1800FLOWERS.COM
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`& Design) (collectively, the “FRUIT BOUQUETS Oppositions”). Further, pursuant to 37 C.F.R.
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`§ 2.117(a) and T.B.M.P. § 510.02(a), Applicant moves the Board to suspend the consolidated
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`opposition proceeding on the ground that Applicant and Opposer Edible Arrangements, LLC
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`US2000 11215118.1
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`(“Opposer”) are currently parties to a civil action initiated by Applicant in the United States
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`District Court for the Eastern District of New York that will dispose of the issues raised in the
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`FRUIT BOUQUETS Oppositions.
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`I.
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`
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`Applicant’s Motion to Consolidate the FRUIT BOUQUETS Oppositions
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`The Board has the discretion to consolidate opposition proceedings when the proceedings
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`involve common questions of law or fact and when consolidation will result in savings of time,
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`effort, and expense. Fed. R. Civ. P. 42(a); see also T.B.M.P. § 511 and authorities cited therein.
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`In this case, consolidation is appropriate because the FRUIT BOUQUETS Oppositions involve
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`identical parties and identical questions of law and fact, namely, whether Applicant’s marks—
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`consisting of the phrase “FRUIT BOUQUETS” together with a distinctive stylized strawberry
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`and vine design (collectively, Applicant’s “FRUIT BOUQUETS Marks”)—are likely to cause
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`confusion with Opposer’s Registration Nos. 3429717 (BERRY BOUQUET), 3429718 (BERRY
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`TREE BOUQUET), and 3869223 (DIPPEDFRUIT.COM & Design) (collectively, Opposer’s
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`“BERRY Marks”). Indeed, the six notices of opposition filed by Opposer in connection with the
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`FRUIT BOUQUETS Oppositions are identical, containing the same sixteen paragraphs.
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`Consolidation is also appropriate because Applicant already has filed answers to each of the
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`FRUIT BOUQUETS Oppositions. See T.B.M.P. § 511 (“Generally, the Board will not consider
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`a motion to consolidate until an answer has been filed . . . in each case sought to be
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`consolidated.”).
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`Accordingly, Opposer respectfully requests the Board to consolidate the FRUIT
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`BOUQUETS Oppositions for purposes of both discovery and trial, and to reset a common
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`schedule for discovery, testimony, and trial dates for the consolidated proceedings.
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`- 2 -
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`US2000 11215118.1
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`II.
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`Applicant’s Motion to Suspend the Consolidated Opposition Proceeding
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`In its FRUIT BOUQUETS Oppositions, Opposer alleges that Applicant’s use and
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`registration of Applicant’s FRUIT BOUQUETS Marks are likely to cause confusion, or to cause
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`mistake, or to deceive as to the affiliation, connection, or association of Applicant and
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`Applicant’s goods and services with Opposer and Opposer’s goods and services offered under
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`Opposer’s BERRY Marks. Earlier today, on March 27, 2012, Applicant filed a civil action
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`against Opposer in the United States District Court for the Eastern District of New York seeking
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`declaratory judgment that its FRUIT BOUQUETS Marks do not infringe, deceive, or unfairly
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`compete with Opposer’s BERRY Marks under federal or state law. A copy of the Complaint
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`filed in the case, captioned 1-800-Flowers.com, Inc. v. Edible Arrangements, LLC (Civil Action
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`No. 1:12-cv-1483) (the “Civil Action”), is attached as Exhibit A. Because the issues raised in
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`the FRUIT BOUQUETS Oppositions are fully subsumed by the pending Civil Action, the
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`FRUIT BOUQUETS Oppositions should be suspended in favor of the Civil Action.
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`
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`The Board has the power to suspend proceedings in favor of a pending civil action
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`pursuant to Trademark Rule 2.117(a), which provides
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`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or the other Board
`proceeding.
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`37 C.F.R. § 2.117(a). Similarly, the Trademark Trial and Appeal Board Manual of Procedure
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`provides that, “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding may have a bearing on the issues before the Board.”
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`T.B.M.P. § 510.02(a) (3d ed. 2011).
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`US2000 11215118.1
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`The Board routinely exercises this power “in the interest of judicial economy and
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`consistent with [its] inherent authority to regulate its own proceedings to avoid duplicating the
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`effort of the court and the possibility of reaching an inconsistent conclusion.” Soc’y of Mex. Am.
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`Eng’rs & Scientists, Inc. v. GVR Pub. Relations Agency, Inc., Opp. No. 91121723, 2002 WL
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`31488947, at *4 (T.T.A.B. Nov. 6, 2001).1 And suspension is appropriate where, as here, the
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`Board proceeding commenced before the civil action. See, e.g., Tokaido v. Honda Assocs., Inc.,
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`179 U.S.P.Q. 861, 862 (T.T.A.B. 1973) (“[N]otwithstanding the fact that the Patent Office
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`proceeding was the first to be filed, it is deemed to be the better policy to suspend proceedings
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`herein until the civil suit has been finally concluded.”); see also McCarthy, supra, at § 32:47
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`(“An inter partes administrative proceeding may even be stayed when the court action was
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`commenced after the commencement of the administrative proceeding.”).
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`The outcome of the Civil Action will conclusively and permanently resolve the issues
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`presently before the Board in the FRUIT BOUQUETS Oppositions. The Civil Action is
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`therefore the appropriate venue in which to resolve these issues, particularly because a final
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`1 See also Vais v. Vais Arms, Inc., Opp. No. 91154485, 2004 WL 390936, at *1 (T.T.A.B. Feb.
`26, 2004) (“It is the policy of the Board to suspend proceedings pursuant to Trademark Rule
`2.117(a) when the parties are involved in a civil action which may be dispositive of or have a
`bearing on the Board case.”); Kearns-Tribune, LLC v. Salt Lake Tribune Publ’g Co., LLC, Opp.
`No. 91151843, 2003 WL 22134916, at *3 (T.T.A.B. Sept. 11, 2003); Gen. Motors Corp. v.
`Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1937 (T.T.A.B. 1992) (suspending
`cancellation proceeding where pending civil action requested cancellation of respondent’s
`trademark registrations); Argo & Co. v. Carpetsheen Mfg., Inc., 187 U.S.P.Q. 366, 367 (T.T.A.B.
`1975) (suspending opposition proceeding pending state court action between applicant and third
`party to determine ownership of applicant’s mark); Townley Clothes, Inc. v. Goldring, Inc., 100
`U.S.P.Q. 57, 58 (Comm’r Pat. & Trademarks 1953) (“[I]t would not seem to be in the interests of
`‘judicial economy’ for the parties to proceed in two forums . . . .”); 6 J. Thomas McCarthy,
`McCarthy on Trademarks and Unfair Competition § 32:47 (4th ed. 2010) (“It is standard
`procedure for the Trademark Board to stay administrative proceedings pending the outcome of
`court litigation between the same parties involving related issues.”); 1 Jeffery A. Handelman,
`Guide to TTAB Practice § 14.15(A) (2011) (“Generally, it is the Board’s practice to suspend a
`Board proceeding when there is a pending civil action or another Board proceeding which may
`be dispositive of, or have a bearing on, the proceeding proposed to be suspended.”).
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`- 4 -
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`US2000 11215118.1
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`decision in the Civil Action would be binding upon the United States Patent and Trademark
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`Office. See, e.g., Tokaido, 179 U.S.P.Q.2d at 862 (“[W]hile a decision by the District Court
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`would be binding upon the Patent Office, a decision by the Trademark Trial and Appeal Board
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`would only be advisory in respect to the disposition of the case pending in the District Court.”).
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`Accordingly, the instant proceeding should be suspended pending disposition of the Civil Action.
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`III. Conclusion
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`
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`For the foregoing reasons, Applicant respectfully submits that the FRUIT BOUQUETS
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`Oppositions be consolidated, and that the consolidated opposition proceeding be suspended
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`pending disposition of the Civil Action.
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`Dated: March 27, 2012
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`Respectfully submitted,
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`
`
`By
`Judith A. Powell
`James W. Faris
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309-4528
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
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` Attorneys for Applicant
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`US2000 11215118.1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`EDIBLE ARRANGEMENTS, LLC
`
`
`
`v.
`
`1-800-FLOWERS.COM, INC.
`
`
`
`Applicant.
`
`
`)
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` Opposition No. 91203846
`
`
` Serial No. 85311052
`
`
` Mark: FRUIT BOUQUETS & Design
`
`
`
`
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`CERTIFICATE OF SERVICE
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`I certify that a true copy of the attached APPLICANT’S MOTION TO
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`CONSOLIDATE OPPOSITION PROCEEDINGS AND TO SUSPEND THE
`CONSOLIDATED OPPOSITION PROCEEDING was served on Opposer’s Attorney of
`Record on March 27, 2012 via first-class mail addressed to:
`
`
`Julianna B. Bochinski
`c/o Edible Arrangements, LLC
`95 Barnes Road
`Wallingford, CT 06880
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`_____________________________
` James W. Faris
`Attorney for Applicant
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`CERTIFICATE OF TRANSMITTAL
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`I certify that a true copy of the attached APPLICANT’S MOTION TO
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`CONSOLIDATE OPPOSITION PROCEEDINGS AND TO SUSPEND THE
`CONSOLIDATED OPPOSITION PROCEEDING is being filed electronically with the PTO
`via ESTTA on March 27, 2012.
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` James W. Faris
`Attorney for Applicant
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`US2000 11215118.1
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`
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`EXHIBIT A
`to Applicant’s Motion to Consolidate Opposition Proceedings and to
`Suspend the Consolidated Opposition Proceeding
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`

`
`
`‘IS 44 (Rev. 09111)
`TheJS 44 civilcoversheetandtheinformation containedherein neitherre lacenorsu plementthefilingandserviceofpleadings orotlrtggapersas reéuircdby law, exceptasprovided
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`{SEEINSTRUCTIONS ‘ON NEXTPAGE OF THIS FORM.)
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`CIVIL CoVEC°»¥E"'i' 1
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`I. (a) PLAINTIFFS
`—1-"800-FLOWERS.C'0M, inc.
`-
`(b) County ofResidence ofFirstListed Plaintiff
`fiXCEPT IN U.S. PLAINTIFFCASE-S7
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`_
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`I
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`_
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`DEFENDANTS
`I DIBLE ARRANGEMENTS, LLC
`F ‘ L
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`‘N CLERKSO FF‘ E.D.N.Y.
`New Haven
`Rgounty ofResidence ofFirst Listed Defendant
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`28 U.S.C.
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`Brief description of cause:
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`-"ii i-EDNY Revision 12/2011
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`CERTIFICATION OF ARBITRATION ELIGIBILITY
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`"."i"'Iiocal Arbitration Rule 83.10 provides that with certain exceptions, actions seeking money damages only in an amount not in excess of $150,000,
`,_ exclusive of interest and costs, are eligible for compulsory arbitration. The amount of damages is presumed to be below the threshold amount unless a
`certification to the contrary is filed.
`
`counsel for 1-80°-Fluwers-com» Inc?
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`, do hereby certify that the above captioned civil action is
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`the complaint seeks injunctive relief, the matter is otherwise ineligible for the following reason
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`monetary damages sought are in excess of S 1 50,000, exclusive of interest and costs,
`
`DISCLOSURE STATEMENT - FEDERAL RULESCIVIL PROCEDURE 7.1
`
`Identify any parent corporation and any publicly held corporation that owns 10% or more or its stocks:
`
`5‘ _
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`._
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`:
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`I
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`RELATED CASE STATEMENT {Section VIII on the Front of this Form)
`
`'.fj.-_ -_Please list all cases that are arguably related pursuant to Division ofBusiness Rule 50.3.1 in Section VIII on the front ofthis form. Rule 50.3.1 (3)
`*' ‘provides that “A civil case is “related” to mother civil_ case for purposes of this guideline when, because of the similarity of facts and legal issues or .
`because the cases arise from the same transactions or events, a substantial saving ofjudicial resources is likely to result from assigning both cases to the
`.. same judge and magistrate judge.” Rule 50.3.] (b) provides that“ A civil case shall not be deemed ‘Telated” to another civil case merely because the civil
`' case: (A) involves identical legai issues, or (B) involves the same parties.” Rule 50.3.1 (c) further provides that “Presumptively, and subject to the power
`of a judge to determine otherwise pursuant to paragraph (d), civil cases shall not be deemed to be “related” unless both cases are still pending before the
`. court.”
`
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`‘_‘”’: C"-1 .)
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`NY-E DIVISION or BUSINESS RULE S0.1(d)[2)
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`Is the civil action being filed in the Eastern District removed from aNew York State Court located in Nassau or Suffolk
`County: N0
`r
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`If you answered “no" above:
`a) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, "occur in Nassau or Suffolk
`County? V63
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`b) Did the events of omissions giving rise to the claim or claims, or a substantial part thereof, occur in the Eastern
`District? ‘'95
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`"H .11’your answer to question 2 (b) is “No,” does the defendant (or a majority of the defendants, ifthere is more than one) reside in Nassau or
`: 1" §ufi'olk County, or, in an interpleader action, does the claimant (or a majority of the claimants, if there is more than one) reside in Nassau
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`hr Suffolk County?
`(Note: A corporation shall be considered a resident of the County in which it has the most significant contacts).
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`'
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`=
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`BAR ADMISSION
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`, I) am currently admitted in the Eastern District ofNew York and currently a member in good standing of the bar of this court.
`Yes
`D No
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`"i
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`‘H Are you currently the subject of any disciplinary action (s) in this or any other state or federal court?
`Yes
`(If yes, please explain)
`No
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`-
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`’
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`E
`i
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`IN THE UNITED STATEQIEZRIHET
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`-
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`—*
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`1-800—FLOWER.S.COM, INC.,
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`1N
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`g
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`I US L-asm-.=e“1 ceu-R1 ii.D.N.Y
`a»
`T MAR 27 2012
`‘A
`v.
`...(.3i'vi1 gdi¢a1taeNE.D OFHCE
`EDIBLE ARRANGEMENTS, LLC
`H
`J
`Defendant.
`‘"""
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`COMPLAINT FOR DECLARATORY JUDGM ‘
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`FOR THE EASTERN DISTRICT OF NEW YORK
`RECEIVED
`OFT-1cE
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`Plaintiff,
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`5
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`‘" _ ,,
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`Plaintiff 1—800—Flowers.com, Inc. (“Plaintiff”) alleges the following for its Complaint for
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`Declaratory Judgment against Defendant Edible Arrangements, LLC (“Defendant”).
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`SUBSTANCE OF THE ACTION
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`1.
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`This is an action, pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et
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`seq., and Rule 57 of the Federal Rules of Civil Procedure, for a declaratory judgment that
`Plaintiff’s use of its trademarks has not infringed -or interfered "with, and does not infringe or
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`otherwise interfere with, the asserted rights of Defendant, and that Plaintiffs acts have not
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`violated and do not Violate federal or state laws relating to trademark infringement, unfair
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`competition, or deceptive-trade practices, including without limitation Sections 32 and _43(a) of
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`the Lanham Act, 15 U.S..C. §§. 1114 and 1125(a), or the statutory or common law of the State of
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`New York or the laws of other States.
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`THE PARTIES
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`2.
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`Plaintiff 1-800-Flowerscom, Inc.
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`is a Delaware corporation with its principal
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`place of business located in this District at 1 Old C0unt1"'y_Road,sSuite 500, Carle Place, New
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`York, 11514.
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`

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`3.
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`Defendant Edible Arrangements, LLC is a limited liability company organized
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`under the laws of Connecticut with its principal place of business located at 95 Barnes Road,
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`Wallingford, Connecticut, 06492. On information and belief, Defendant does substantial
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`business in the State of New York and in this District.
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`JURISDICTION AND VENUE
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`4.
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`-
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`This Court has jurisdiction over the subject matter of this action under Section 39
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`ofthe Lanham Act, 15 U.S.C. § 1121, under 28 U.S.C. §§ 1331 and 1338, and under 28 U.S.C. §
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`2201.
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`5.
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`This Court has personal jurisdiction over the parties because Plaintiff has its
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`principal place of business in this District, and Defendant regularly transacts business in this
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`District or has otherwise made or established contacts with this District for personal jurisdiction
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`to be consistent with the Constitution and NY. Civil Practice Law Rules §§ 301 and 302.
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`6.
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`Venue is proper under 28 U.S.C. § l39l(b) and (c) because a substantial part of
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`the events giving rise to the claim in this case occurred in this District, Plaintiff has a principal
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`place of business in this District, and Defendant does business in this District.
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`FACTUAL BACKGROUND
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`Plaintiff and Its BOUQ QUET OF FRUITS and FRUIT BOUQ QUETS Marks
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`7.
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`For decades, Plaintiff 1-800-Flowersconi, Inc., together with its predecessors and
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`licensees, has provided a nationwide floral product and gift delivery service ensuring delivery of
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`-flowers, a variety of food items, balloons, stuffed animals, floral arrangements, and other gifts to
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`customers throughout the United States. Plaintiff has provided and continues to provide these
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`services under a number of well—known.bran_d names and marks, including but not limited to
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`

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`l—800—FLOWERS.COM®,
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`CONROYS®,
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`1-800-BASKETS.COM®,
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`BOUQUET
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`OF
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`FRUITS®, CHERYL’S®, FANNIE MAY®, and THE POPCORN PACTORY®.
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`8.
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`In the spring of 2011, Plaintiff determined that it would enter the business of
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`creating and delivering fresh cut fruit arrangements. To that end, Plaintiff adopted and in July,
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`2011, began using the mark FRUIT BOUQUETS together with a distinctive stylized strawberry
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`and vine design in connection with its creation, marketing, sale, and delivery of cut fresh fruit
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`arrangements.
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`Plaintiff also filed applications to register several versions of its mark in
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`International Classes 29, 30, and 35 as follows:
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`y
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`7
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`5
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`85311052
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`May 3,2011
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`853111131
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`May 3, 2011
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`85311102
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`May 3,2011
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`
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`85314779
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`May 6, 2011
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`85314758
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`May 6,2011
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`

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`85314733
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`May 6, 2011
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`85471556
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`November 14, 2011
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`85471537
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`November 14, 2011
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`The foregoing applications are referred to collectively hereinafter as Plaintiff’s “FRUIT
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`BOUQUETS Applicationsfi’, and the trademarks that are the subjects of the applications are
`referred to hereinafter collectively as Plaintiff‘s “FRUIT BOUQUETS Marks.”
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`9.
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`During the PTO’s
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`review of the FRUIT BOUQUETS Applications,
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`the
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`Examining Attorney found no conflicting marks that would bar registration of them, and the
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`United States Patent & Trademark Office (“PTO”) approved all of them for publication, as
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`shown in the PTO online database records attached as collective Exhibit A.
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`10.
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`Plaintiff has invested substantial time, money, and effort in building the business
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`conducted in" connection with the FRUIT BOUQUETS marks and in promoting its goods and
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`services offered and to be offered in connection with the FRUIT BOUQUETS marks. On
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`July 18, 2011, Plaintiff began promoting its goods and services under the FRUIT BOUQUETS
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`marks, andby December, 2011, it.-was selling goods and services under its FRUIT BOUQUETS
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`

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`Marks in more than 25 markets throughout the country. In just a few months, it has accepted and
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`delivered thousands of orders under the FRUIT BOUQUETS Marks.
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`11.
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`In addition, Plaintiff has expended tens of thousands of dollars in marketing its
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`goods and services provided under the marks. For example, Plaintiff promotes its goods and
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`services under the FRUIT BOUQUETS Mark on its websites located at l800flowers.com and
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`fruitbouquetscom, as shown in Exhibit B.
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`It has also distributed thousands of print fliers and
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`coupons bearing the marks, as shown in Exhibit C. The stores that offer the products display
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`banners that bear the marks, delivery trucks bear the marks, and the orders are delivered in
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`packaging and with other items that bear the marks, such as shown in Exhibit D. As a result of
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`Plaintiff” s efforts, in the eight months that Plaintiff has used the FRUIT BOUQUETS Mark,
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`advertising and promotion of it has resulted in hundreds of thousands of commercial impressions
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`for the brand.
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`12.
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`Plaintiff has also invested substantially in the development of its business
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`associated with the FRUIT BOUQUETS Marks, including building a franchise network through
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`offerings that began in the fall of 201 1.
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`13.
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`Prior to Plaintiff’ s adopting the FRUIT BOUQUET marks, Plaintiff’ s predecessor
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`had long used several BOUQUET OF FRUITS marks for goods and services related to fruit
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`gifts. Thus, in addition to its FRUIT BOUQUETS Applications, Plaintiff is also the owner of
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`several federal trademark registrations for BOUQUET OF FRUITS-formative marks as shown
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`below:
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`nuts; namely, peanuts, almonds,
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`Descrition of Goods/Services
`gift packs consisting primarily of
`fresh peaches, nectarines, and
`pears; and including mixed dried
`fruits, raisins, processed mixed
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`1733412
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`1 1/ 17/92
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`Description of Goods/Services
`cashews, and pistachios, and
`gourmet coffee
`retail store and online retail store
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`
`
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`services in the field of specially
`designed gifts, gift baskets and
`gift packs, wine, crackers, flesh
`fruit, cheese, sausage, candy,
`chocolate, chocolate covered
`fruits, chocolate dipped fruits,
`chocolate covered nuts, flavored
`nuts, processed nuts, dried fruits,
`processed fruits, and other
`related snack items
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`Dried and process fruits;
`processed nuts; flavored nuts” in
`International Class 29;
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`“chocolate; chocolate covered
`fruits; chocolate dipped fi'uits;
`chocolate covered nuts” in
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`
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`International Class 30; “flowers
`and fresh fruits” in International
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`BOUQUET OF FRUITS
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`3244359
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`5/22/07
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`.
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`3249239
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`6/5/07
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`BOUQUET OF FRUITS
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`Class 31; and “design and
`arrangement of gifts, gift baskets
`and gift packs containing an
`assortment of wine, crackers,
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`fresh fruit, cheese, sausage,
`chocolate covered fruits,
`chocolate dipped fruits,
`chocolate covered nuts,
`processed nuts, flavored nuts,
`dried fruits, processed fruits, and
`other snack items” in
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`International Class 45
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`14.
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`Plaintiff, together with its predecessor, has used all of these marks since at least as
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`early as 1987. All of the registrations are prima facie evidence of the validity of the mark and
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`the exclusivity of Plaintiff’ s rights in them, and Registration No. 1733412 is conclusive evidence
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`of the validity and Plaintiff’ s exclusive rights in that mark. Copies of the Certificates of
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`Registration for the marks are attached as Exhibits E, F, and G. Plaintiff’ s Reg. Nos. 1733412,
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`3244359, and 3249239 are referred to collectively hereinafter as Plaintiffs “BOUQUET OF
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`«K;
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`x_/'
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`FRUITS Registrations.” The marks that are the subjects of them are referred to as the
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`“BOUQUET OF FRUITS Marks.”
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`Defendant and its BERRY Marks
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`15.
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`Defendant
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`is
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`in the business of marketing,
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`selling, and delivering fruit
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`arrangements and dipped fruit gift items, as well as selling fruit salads and fruit beverages,
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`through, according to its website, over ll00 locations within and outside the United States.
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`Defendant markets and sells its products and services under the name and mark EDIBLE
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`ARRANGEMENTS®.
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`16.
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`Defendant also is the owner of record for a number of registrations for other
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`marks according to the database of the PTO. For example, it is the purported owner of:
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`a)
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`Reg. No. 3429717, issued May 20, 2008 for the mark BERRY BOUQUET
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`'
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`for “fresh fruit cut into flower shapes and arranged in containers as floral designs;
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`processed fruits; arrangements made of fresh processed fruits” in International Class 29,
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`allegedly first used in commerce September 1, 1999;
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`b)
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`Reg. No. 3429718, issued May 20, 2008 for the mark BERRY TREE
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`BOUQUET, disclaiming both “BERRY” and “BOUQUET,” for “flesh fruit cut into
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`flower shapes and arranged in containers as floral designs; processed fruits; arrangements
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`made of fresh processed fruit” in International Class 29, allegedly first used in commerce
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`November 1, 2001; and
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`c)
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`Reg. No. 3869223, issued November 2, 2010 for the mark
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`DIPPEDFRUITCOM-& Design, disclaiming “DIPPEDFRUITCOM” apart from the
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`mark as depicted below, allegedly first used in commerce on June 5, 2009, for “on-line
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`ordering services featuring fresh fruit partially covered with an edible coating arranged in
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`a decorative container” in International Class 35:
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`DIPPeDfRUI
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`Copies of the Certificates of Registration for these marks are attached as Exhibit H, I, and J.
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`Defendant’s Reg. Nos. 3429717, 3429718, and 3869223 are referred to collectively as
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`Defendant’s “BERRY Marks.”
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`17.
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`According to the PTO records, Defendant also owns registrations for claimed
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`marks that incorporate the term “BOUQUET” in which Defendant has acknowledged the merely
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`descriptive or generic nature of them, such that
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`they are only registered on the PTO’s
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`Supplemental Register. These Supplemental Register registrations include: PEANUT BUTTER
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`CHOCOLATE BOUQUET (Reg. No. 3815967); FRUIT TRUFFLES BOUQUET (Reg. No.
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`3750846); PEANUT BUTTER BOUQUET (Reg. No. 3694410); BREAST CANCER
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`AWARENESS BOUQUET (Reg. No. 3464761); DIPPED FRUIT BOUQUET (Reg. No.
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`3396702); and CHOCOLATE BANANA BOUQUET (Reg. No. 3393667).
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`18.
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`The PTO records also show Defendant as the owner of registrations for marks that
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`incorporate the term “BOUQUET” in which Defendant has disclaimed the term “BOUQUET,”
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`thereby admitting “bouquet” is used as a merely descriptive or generic term that Defendant
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`cannot protect other than as used in Defendant’s mark. These disclaimer registrations include:
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`SWEET ANNIVERSARY BOUQUET (Reg. No. 3853513); PEARADISE BOUQUET (Reg.
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`No. 3704604); PATRIOTIC APPRECIATION BOUQUET (Reg. No. 3615353); AMBITION
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`BOUQUET (Reg. No. 3543593); JOB WELL DONE BOUQUET (Reg. No. 3527515);
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`WELCOME ABOARD BOUQUET (Reg. No. 3527514); SWEET LIBERTY BOUQUET (Reg.
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`8
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`. No. 3527505); ROCK A BYE BOUQUET (Reg. No. 3527476); ROCK A BYE BOUQUET
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`(Reg. No. 3527476); YOU’RE THE BEST BOUQUET (Reg. No. 3501786); MORNING
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`MOTIVATOR BOUQUET (Reg. No. 3501785); THE RECOGNITION BOUQUET (Reg. No.
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`3501782); THE ACCOMPLISHMENT BOUQUET (Reg. No.
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`3501781); FRUITFUL
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`ACHIEVEMENT BOUQUET (Reg. No. 3501780); EXTRA EFFORT BOUQUET (Reg. No.
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`3499017); and SWEETHEART BOUQUET (Reg. No. 3503964).
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`Co-Existence of Plaintiffs and Defendant’s Marks
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`19.
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`At the time Defendant adopted an