Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91206346
`
`Plaintiff
`1-800-FLOWERS.COM, INC.
`
`James W, Faris
`Kilpatrick Townsend Stockton
`1100 Peachtree Street, Ste 2800
`Atlanta, GA 30309-4528
`UNITED STATES
`
`jfaris@kts|aw.com, jpowe||@kts|aw.com, tmadmin@kts|aw.com,
`|crumb|ey@kts|aw.com
`
`Other Motions/Papers
`James W. Faris
`
`jfaris@kts|aw.com, jpowe||@kts|aw.com, tmadmin@kts|aw.com,
`|crumb|ey@kts|aw.com
`/James W. Farisl
`
`08/21/2012
`
`2012-08-21 Opposer's Mtn to Consolidate Opp and to Suspend.pdf ( 8 pages
`)(207880 bytes )
`Exhibit A.pdf (5 pages )(63738 bytes)
`Exhibit B - Part 1v2.pdf (61 pages )(1306194 bytes )
`Exhibit B - Part 2v2.pdf ( 35 pages )(929603 bytes )
`Exhibit B - Part 3v2.pdf (56 pages )(850647 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA490177
`ESTTA Tracking number:
`08/21/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206346
`Plaintiff
`1-800-FLOWERS.COM, INC.
`James W, Faris
`Kilpatrick Townsend Stockton
`1100 Peachtree Street, Ste 2800
`Atlanta, GA 30309-4528
`UNITED STATES
`jfaris@ktslaw.com, jpowell@ktslaw.com, tmadmin@ktslaw.com,
`lcrumbley@ktslaw.com
`Other Motions/Papers
`James W. Faris
`jfaris@ktslaw.com, jpowell@ktslaw.com, tmadmin@ktslaw.com,
`lcrumbley@ktslaw.com
`/James W. Faris/
`08/21/2012
`2012-08-21 Opposer's Mtn to Consolidate Opp and to Suspend.pdf ( 8 pages
`)(207880 bytes )
`Exhibit A.pdf ( 5 pages )(63738 bytes )
`Exhibit B - Part 1v2.pdf ( 61 pages )(1306194 bytes )
`Exhibit B - Part 2v2.pdf ( 35 pages )(929603 bytes )
`Exhibit B - Part 3v2.pdf ( 56 pages )(850647 bytes )
`
`

`
`
`1-800-FLOWERS.COM, INC.
`
`
` Opposer,
`
`
`v.
`
`
`EDIBLE ARRANGEMENTS, LLC
`
`
` Applicant.
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) Opposition No. 91206347
`) Mark: BATTY BOUQUET
`)
`
`) Opposition No. 91206346
`) Mark: HONEY BEAR BOUQUET
`)
`
`) Opposition No. 91206345
`) Mark: SWEETHEART SWIZZLE
`) BOUQUET
`)
`
`) Opposition No. 91206479
`) Mark: O’CANADA BOUQUET
`)
`
`
`
`
`OPPOSER’S MOTION TO CONSOLIDATE OPPOSITION PROCEEDINGS AND TO
`SUSPEND THE CONSOLIDATED OPPOSITION PROCEEDING
`
`Pursuant to Rule 42(a) of the Federal Rules of Civil Procedure, 37 C.F.R. § 2.104(b), and
`
`T.B.M.P. § 511, Opposer 1-800-Flowers.com, Inc. (“Opposer”) hereby moves the Board to
`
`consolidate Oppositions Nos. 91206347 (BATTY BOUQUET), 91206346 (HONEY BEAR
`
`BOUQUET), 91206345 (SWEETHEART SWIZZLE BOUQUET), and 91206479 (O’CANADA
`
`BOUQUET) (collectively, Opposer’s “BOUQUET Oppositions”) with the already consolidated
`
`opposition proceedings maintained in Opposition No. 91203846. Further, pursuant to 37 C.F.R.
`
`§ 2.117(a) and T.B.M.P. § 510.02(a), Opposer moves the Board to suspend Opposer’s
`
`BOUQUET Oppositions for the same reason it suspended the consolidated Opposition No.
`
`91203846: that Opposer and Applicant Edible Arrangements, LLC (“Applicant”) are currently
`
`parties to a civil action initiated by Opposer in the United States District Court for the Eastern
`
`District of New York (the “Civil Action”) that will dispose of the issues raised in Opposer’s
`
`BOUQUET Oppositions.
`
`
`
`
`
`

`
`
`
`I.
`
`
`
`RELEVANT BACKGROUND
`
`In May 2011, Opposer filed with the United States Patent and Trademark Office
`
`(“USPTO”) applications to register several versions of the mark FRUIT BOUQUETS together
`
`with a stylized strawberry and vine design for, among other things, cut fresh fruit arrangements
`
`(Application Serial Nos. 85311052, 85311131, 85311102, 85314779, 85314758, and 85314733).
`
`(The foregoing trademark applications are referred to collectively hereinafter as “Opposer’s
`
`FRUIT BOUQUETS Applications,” and the trademarks that are the subjects of those
`
`applications are referred to hereinafter collectively as “Opposer’s FRUIT BOUQUETS Marks.”)
`
`On February 13, 2012, after the USPTO approved and published Opposer’s FRUIT
`
`BOUQUETS Applications, Applicant filed notices of opposition against them before the
`
`Trademark Trial and Appeal Board (the “Board”) (Opposition Nos. 91203907, 91203891,
`
`91203873, 91203868, 91203866, and 91203846, referred to collectively hereinafter as
`
`“Applicant’s Oppositions”). In Applicant’s Oppositions, Applicant claims that there is a
`
`likelihood of confusion between Opposer’s FRUIT BOUQUETS Marks and the marks
`
`underlying three trademark registrations owned by Applicant: (1) Registration No. 3429717 for
`
`the mark BERRY BOUQUET; (2) Registration No. 3429718 for the mark BERRY TREE
`
`BOUQUET; and (3) Registration No. 3869223 for the mark DIPPEDFRUIT.COM & Design.
`
`(Registration Nos. 429717, 3429718, and 3869223 are referred to collectively hereinafter as
`
`“Applicant’s BERRY Marks.”)
`
`On March 26, 2012, Opposer filed answers to Applicant’s Oppositions with the Board.
`
`The following day, on March 27, 2012, Opposer filed the Civil Action seeking declaratory
`
`judgment that its use of Opposer’s FRUIT BOUQUET Marks did not infringe or otherwise
`
`- 2 -
`
`
`
`

`
`interfere with the asserted rights of Applicant in Applicant’s BERRY Marks. Also on March 27,
`
`Opposer moved the Board to consolidate and suspend Applicant’s Oppositions in light of the
`
`Civil Action. The Board granted Opposer’s motions on April 17, 2012, consolidating
`
`Applicant’s Oppositions under Opposition No. 91203846 and suspending the consolidated
`
`opposition proceeding pending final disposition of the Civil Action. A copy of the Board’s April
`
`17 Order is attached as Exhibit A.
`
`In early August 2012, in light of Applicant’s position in Applicant’s Oppositions that
`
`Opposer’s FRUIT BOUQUETS Marks are likely to cause confusion with Applicant’s BERRY
`
`Marks, Opposer filed Opposer’s BOUQUET Oppositions against Applicant’s applications to
`
`register the marks BATTY BOUQUET, HONEY BEAR BOUQUET, SWEETHEART
`
`SWIZZLE BOUQUET, and O’CANADA BOUQUET (collectively, “Applicant’s BOUQUET
`
`Marks”). The basis for the BOUQUET Oppositions is that if the Board accepts Applicant’s
`
`assertions that Opposer’s FRUIT BOUQUETS Marks are confusingly similar to Applicant’s
`
`BERRY Marks, then Applicant’s BOUQUET Marks are likely to be confused with Opposer’s
`
`previously-used BOUQUET OF FRUITS marks that are the subject of three incontestable
`
`trademark registrations owned by Opposer: Opposer’s Registration Nos. 1733412, 3244359, and
`
`3249239 (collectively, “Opposer’s BOUQUET OF FRUITS Marks”). Thus, if Applicant’s
`
`position is accepted, then Opposer has prior and superior rights that preclude registration of the
`
`marks at issue in Opposer’s BOUQUET Oppositions.
`
`II.
`
`ARGUMENT
`
`A.
`
`Consolidating Opposer’s BOUQUET Oppositions with the Already
`Consolidated Opposition No. 91203846 Will Result in Savings of Time,
`Effort, and Expense.
`
`The Board has the discretion to consolidate opposition proceedings when the proceedings
`
`involve common questions of law or fact and when consolidation will result in savings of time,
`
`- 3 -
`
`
`
`

`
`effort, and expense. Fed. R. Civ. P. 42(a); see also T.B.M.P. § 511 and authorities cited therein.
`
`In this case, consolidation of Opposer’s BOUQUET Oppositions with the already consolidated
`
`Applicant’s Oppositions (Opposition No. 91203846) is appropriate because Opposer’s
`
`BOUQUET Oppositions and Applicant’s Oppositions involve identical parties and identical
`
`questions of law and fact, namely, whether Applicant’s BOUQUET-formative marks (i.e.,
`
`Applicant’s BOUQUET Marks and Applicant’s BERRY Marks) are likely to cause confusion
`
`with Opposer’s BOUQUET-formative marks (i.e., Opposer’s FRUIT BOUQUETS Marks and
`
`Opposer’s BOUQUET OF FRUITS Marks). Indeed, in the notices of opposition for each of
`
`Opposer’s BOUQUET Oppositions, Opposer specifically references and relies on the notices of
`
`opposition filed by Applicant in Applicant’s Oppositions. See Opposer’s BOUQUET
`
`Oppositions ¶¶ 4-7.
`
`Accordingly, Opposer respectfully requests the Board to consolidate Opposer’s
`
`BOUQUET Oppositions with the already consolidated Applicant’s Oppositions for purposes of
`
`both discovery and trial, and to reset a common schedule for discovery, testimony, and trial dates
`
`for the consolidated proceedings.
`
`B.
`
`The Outcome of the Civil Action Pending Between Opposer and Applicant
`Will Conclusively and Permanently Resolve the Issues Before the Board in
`Opposer’s BOUQUET Oppositions.
`
`In its BOUQUET Oppositions, Opposer alleges that—in the event the Board were to
`
`accept the position asserted by Applicant in Applicant’s Oppositions—Applicant’s BOUQUET
`
`Marks, when used in connection with Applicant’s goods, so resemble Opposer’s BOUQUET OF
`
`FRUITS Marks as to be likely to cause confusion, mistake, and/or to deceive consumers
`
`concerning an affiliation, connection, association or sponsorship with the source of goods and
`
`services sold under Opposer’s BOUQUET OF FRUITS Marks. In the Complaint filed by
`
`Opposer in connection with the Civil Action, Opposer seeks a declaratory judgment as to
`
`- 4 -
`
`
`
`

`
`whether Opposer’s BOUQUET-formative marks are confusingly similar to Applicant’s
`
`BOUQUET-formative marks. A copy of the Complaint filed in the Civil Action, captioned 1-
`
`800-Flowers.com, Inc. v. Edible Arrangements, LLC (Civil Action No. 1:12-cv-1483), is
`
`attached as Exhibit B. The Complaint specifically references several of Applicant’s
`
`BOUQUET-formative marks (¶¶ 17-18), including Applicant’s BERRY Marks (¶ 16), and it also
`
`specifically references Opposer’s FRUIT BOUQUETS Marks (¶ 8) and Opposer’s BOUQUET
`
`OF FRUITS Marks (¶ 13). Because the issues raised in Opposer’s BOUQUET Oppositions are
`
`fully subsumed by the pending Civil Action, Opposer’s BOUQUET Oppositions should be
`
`suspended in favor of the Civil Action.
`
`The Board has the power to suspend proceedings in favor of a pending civil action
`
`pursuant to Trademark Rule 2.117(a), which provides:
`
`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.
`
`
`
`37 C.F.R. § 2.117(a). Similarly, the Trademark Trial and Appeal Board Manual of Procedure
`
`provides that, “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
`
`determination of the other proceeding may have a bearing on the issues before the Board.”
`
`T.B.M.P. § 510.02(a) (3d ed. 2011). The Board routinely exercises this power “in the interest of
`
`judicial economy and consistent with [its] inherent authority to regulate its own proceedings to
`
`avoid duplicating the effort of the court and the possibility of reaching an inconsistent
`
`- 5 -
`
`
`
`

`
`conclusion.” Soc’y of Mex. Am. Eng’rs & Scientists, Inc. v. GVR Pub. Relations Agency, Inc.,
`
`Opp. No. 91121723, 2002 WL 31488947, at *4 (T.T.A.B. Nov. 6, 2001).1
`
`As the Board concluded with respect to the issues raised in Applicant’s Oppositions,
`
`likewise the outcome of the Civil Action will conclusively and permanently resolve the issues
`
`presently before the Board in Opposer’s BOUQUET Oppositions. The Civil Action is therefore
`
`the appropriate venue in which to resolve the issues, particularly because a final decision in the
`
`Civil Action would be binding upon the USPTO. See, e.g., Tokaido, 179 U.S.P.Q.2d at 862
`
`(“[W]hile a decision by the District Court would be binding upon the Patent Office, a decision by
`
`the Trademark Trial and Appeal Board would only be advisory in respect to the disposition of
`
`the case pending in the District Court.”). Accordingly, Opposer’s BOUQUETS Oppositions
`
`should be suspended pending disposition of the Civil Action.
`
`
`
`
`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.”).
`
`- 6 -
`
`
`
`

`
`III. CONCLUSION
`
`For the foregoing reasons, Opposer respectfully submits that Opposer’s BOUQUET
`
`Oppositions be consolidated with the already consolidated Applicant’s Oppositions (Opposition
`
`No. 91203846), and that these proceedings be suspended pending disposition of the Civil Action.
`
`Respectfully submitted,
`
`
`
`Dated: August 21, 2012
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
` Attorneys for Opposer 1-800-Flowers.com, Inc.
`
`
`- 7 -
`
`
`
`

`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true copy of the attached OPPOSER’S MOTION TO CONSOLIDATE
`
`OPPOSITION PROCEEDINGS AND TO SUSPEND THE CONSOLIDATED
`OPPOSITION PROCEEDING was served on Opposer’s Attorney of Record on August 21,
`2012 via first-class mail addressed to:
`
`
`Julianna B. Bochinski
`c/o Edible Arrangements, LLC
`95 Barnes Road
`Wallingford, CT 06880
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_____________________________
` James W. Faris
`Attorney for Applicant
`
`CERTIFICATE OF TRANSMITTAL
`
`
`
`
`
`
`
`
`
`I certify that a true copy of the attached OPPOSER’S MOTION TO CONSOLIDATE
`
`OPPOSITION PROCEEDINGS AND TO SUSPEND THE CONSOLIDATED
`OPPOSITION PROCEEDING is being filed electronically with the PTO via ESTTA on
`August 21, 2012.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` James W. Faris
`Attorney for Applicant
`
`
`
`
`- 8 -
`
`
`
`

`
`EXHIBIT A
`
`OPPOSER’S MOTION TO CONSOLIDATE OPPOSITION PROCEEDINGS AND TO
`SUSPEND THE CONSOLIDATED OPPOSITION PROCEEDING
`
`
`
`EXHIBIT A
`
` OPPOSER’S MOTION TO CONSOLIDATE OPPOSITION PROCEEDINGS AND TO
`SUSPEND THE CONSOLIDATED OPPOSITION PROCEEDING
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
`
`
` Mailed: April 17, 2012
`
`
`
`
`
`Opposition Nos. 91203846 (parent)
`91203866
`91203868
`91203873
`91203891
`91203907
`
`Edible Arrangements, LLC
`
`v.
`
`1-800-FLOWERS.COM, INC.
`
`Robert H. Coggins,
`Interlocutory Attorney:
`
`
`
`On March 27, 2012, applicant filed (in each proceeding)
`
`a combined motion to consolidate Opposition Nos. 91203846,
`
`91203866, 91203868, 91203873, 91203891, and 91203907, and to
`
`suspend the consolidated proceedings pending disposition of
`
`a civil action between the parties.
`
`Telephone Conference
`
`On April 17, 2012, at approximately 11:00 a.m. EDT, the
`
`Board exercised its discretion to conduct a telephone
`
`conference to determine the outstanding motions.
`
`Participating in the conference were Meichelle R. MacGregor,
`
`counsel for opposer; Judith A. Powell, and James W. Faris,
`
`

`
`Opposition Nos. 91203846, 91203866, 91203868, 91203873, 91203891 & 91203907
`
`counsel for applicant; and the above-signed Board attorney
`
`responsible for resolving interlocutory matters in this case.
`
`Inasmuch as the conference was arranged prior to the
`
`expiration of time in which opposer could file a written brief
`
`in opposition to the motion, opposer was allowed time to
`
`provide an oral brief and applicant was allowed time to
`
`provide an oral reply. Thereafter, the Board discussed the
`
`substantive and procedural analysis of the issues presented by
`
`the combined motion. The Board presumes familiarity with the
`
`issues, and for the sake of efficiency this order does not
`
`summarize the parties' arguments in the written or oral
`
`briefs. Instead, this order lists the decisions made by the
`
`Board after careful consideration of all arguments and
`
`comments by the parties.
`
`Change of Correspondence Address
`
`Opposer's change of correspondence (filed April 17,
`
`2012) address was noted.
`
`Motion to Consolidate
`
`Opposer did not contest the motion to consolidate. In
`
`view thereof, the motion to consolidate was granted, and
`
`Opposition Nos. 91203846, 91203866, 91203868, 91203873,
`
`91203891, and 91203907 were consolidated. Fed. R. Civ. P.
`
`42(a). These proceedings may be presented on the same
`
`record and briefs. The Board file will be maintained in
`
`Opposition No. 91203846 as the "parent" case. The parties
`
`2
`
`

`
`Opposition Nos. 91203846, 91203866, 91203868, 91203873, 91203891 & 91203907
`
`should no longer file separate papers in connection with
`
`each proceeding; only a single copy of each paper should be
`
`filed by the parties and each paper should bear the case
`
`caption as set forth above.1
`
`Motion to Suspend
`
`Opposer contested the motion to suspend. However,
`
`inasmuch as it is the policy of the Board to suspend
`
`proceedings when the parties are involved in a civil action
`
`which may be dispositive of or have a bearing on the Board
`
`case, applicant's motion to suspend was granted. Trademark
`
`Rule 2.117(a). Accordingly, the consolidated proceedings
`
`were suspended pending final disposition of the civil action
`
`between the parties.
`
`Within thirty days after the final determination of the
`
`civil action, including the expiration of any time to
`
`appeal, the parties shall so notify the Board so that this
`
`case may be called up for any appropriate action (including,
`
`if appropriate, resetting the deadline for the parties'
`
`settlement and discovery conference; or, if opposer submits
`
`
`1 Opposer stated that it would likely file an amended notice of
`opposition in each case. However, in view of the suspension (see
`discussion, infra) opposer should not file amended notices of
`opposition until proceedings are resumed. When opposer does so,
`each amended notice of opposition should be filed separately in
`the corresponding proceeding (instead of en masse in the "parent"
`case). Similarly, each answer to an amended notice should be
`filed in the individual case to which the answer pertains.
`Inasmuch as proceedings were suspended prior to the expiration of
`the twenty-first day after answers were filed, the Board will
`permit opposer to amend the notices as a matter of course under
`Fed. R. Civ. P. 15(a)(1)(B) upon resumption of proceedings.
`
`3
`
`

`
`Opposition Nos. 91203846, 91203866, 91203868, 91203873, 91203891 & 91203907
`
`amended notices of opposition concurrently with its notice
`
`of final disposition of the civil action, then the Board may
`
`set a deadline for applicant to file amended answers).
`
`During the suspension period the Board shall be notified of
`
`any address changes for the parties or their attorneys.
`
`Related Applications
`
`
`
`The Board is aware of applicant's application Serial
`
`Nos. 85471537 and 85471556 which are pleaded in the civil
`
`action complaint and which are scheduled to be published for
`
`opposition on April 24, 2012. If opposer files notices of
`
`opposition against these applications, opposer must so
`
`inform the Board, and the Board may consider further
`
`consolidation of proceedings –even if the prospective
`
`oppositions are instituted during the civil action
`
`suspension period.2
`
`
`2 The suspension of the consolidated proceedings granted during
`the conference does not toll the time for opposer to either
`obtain extensions of time to oppose or file notices of opposition
`against application Serial Nos. 85471537 and 85471556.
`
`4
`
`

`
`
`
`EXHIBIT B – Part 1
`
` OPPOSER’S MOTION TO CONSOLIDATE OPPOSITION PROCEEDINGS AND TO
`SUSPEND THE CONSOLIDATED OPPOSITION PROCEEDING
`
`

`
`
`‘IS 44 (Rev. 09111)
`TheJS 44 civilcoversheetandtheinformation containedherein neitherre lacenorsu plementthefilingandserviceofpleadings orotlrtggapersas reéuircdby law, exceptasprovided
`e use 0
`e
`by local rules ofcourt. This form, approved ‘by the Judicial Conference 0 the United rates in September 1974, is required for
`Clerk of our: for the purpose of Initiating
`the civil docket sheet.
`{SEEINSTRUCTIONS ‘ON NEXTPAGE OF THIS FORM.)
`
`CIVIL CoVEC°»¥E"'i' 1
`
`I. (a) PLAINTIFFS
`—1-"800-FLOWERS.C'0M, inc.
`-
`(b) County ofResidence ofFirstListed Plaintiff
`fiXCEPT IN U.S. PLAINTIFFCASE-S7
`
`_
`
`I
`
`_
`
`_
`_
`DEFENDANTS
`I DIBLE ARRANGEMENTS, LLC
`F ‘ L
`CE
`‘N CLERKSO FF‘ E.D.N.Y.
`New Haven
`Rgounty ofResidence ofFirst Listed Defendant
`(1NU.S. PLAINTIFF CASES ONLY}
`9 C I EMNATION CASES, USE THE LOCATION OF
`MAR 27 ill” * A-
`,e
`-
`I.
`8
`im or
`rer.
`ee
`m r _
`A cm 5'
`own
`32%riiiitfi?riiiiiirialiiiiifliei’B'a"°°L§;:.r;"r.§,n.N at we
`
`
`
`"
`
`516 248-2002
`ll. BASIS or JURISDICTION (Placean"X"l'nOneBox0nbd
`-
`0 I U.S. Government
`at 3 Federal Question
`'
`Plaintiff
`(US. Government Not a Party)
`'
`
`)3‘
`III. CITIZENSHIP or - -T“
`(For Dr'ver.rr'(y Cases Only)
`PTF
`U I
`
`Citizen ofThis State
`
`our
`D l
`
`incorporated or Principal Place
`ofBusiness In This State
`
`
`
`
`
`ti’ 1‘ Us Govemment
`
`CI .4 Diversity
`(Indicate Cirizemhtp ofParties in Item 1!!)
`
`Citizen 0fAIlOl.lleI' State
`
`at 2
`
`D 2
`
`Incorporated and Principal Place
`of Business in Another State
`
`E}
`
`5
`
`El 5
`
`Citizen or Subject of a
`Forci Coun-
`
`El 3
`
`D 3
`
`Foreign Nation
`
`Cl
`
`6
`
`C|‘i‘6"'
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-A
`
`'
`
`"
`'
`
`Q 210 ‘Land
`Cl 2'20?-'oreclosure
`E;|,.2_30_ Rent Lease 5'. Ejectment
`El. 240 Torts to Land
`E’l.245 Tort Product Liability
`-D»-290 All Other Real Property
`it e
`A
`P
`
`
`I‘
`hi.-ff)-RIGIN
`[31 Original
`Proceeding
`rt 1]‘
`.
`i
`.
`
`
`
`
`
`-
`
`III
`
`_
`_
`Tmnsrened from
`_
`(Place an "X" in One Box Only)
`Cl 6 Muludistrict
`5 another dismct
`El 4 Reinstated or
`3 Rernanded from
`Cl 2 Removed from
`El
`Litigation
`,
`,,-
`—
`Reopened
`. Appellate Court
`State Court
`
`Cite the US. Civil Statute under which you are filing {Do not ctrejurlsdtcrlonalsrarurer unless diversity):
`
`28 U.S.C.
`2201; 15 U.S.C.
`1051. et se . Lanharn Act
`
`Brief description of cause:
`Plaintiffs use of its trademarks has not infrin ad or interfered with Defendant's ri hts
`
`Vl-. -CA-USE or ACTION
`
`vn REQUESTED IN
`CHECK YES only if demanded in complaint: , _.
`DEMAND $
`D C1-1EcK 1;: 11-113 Is A CLASS Acnon
`‘
`JURY DEMAND:
`D "Yes
`rxnu
`C‘
`UNDER F.R.C.P. 23
`To be determlned
`COMPLAINT:
`
`
`DOCKET NUMBER
`
` MAG. IUDGF.
`
`JUDGE
`
`
`APPLYING IFP
`:-i-Rli(lElPT #
`AMOUNT
`
`
`
`
`
`
`
`1 l0 Insurance
`El
`El 625 Drug Related Seizure
`[J 375 False Claims Act
`PERSONAL INJURY
`PERSONAL INJIIRY
`El 422 Appeal 25 USC I58
`
`
`El 120 Marine
`ofProperty 21 USC ll8l
`El 423 Withdrawal
`D 400 Stats: Reapportionment
`Cl 365 Personal Injury -
`D 310 Airplane
`
`El 1-3,9 Miller Act
`0 315 Airplane Product
`Product Liability
`Cl 690 Other
`28 USC 157
`El 410 Antitrust
`CI l40'Negotiable Instrument
`Liability
`0 367 Health Care!
`III 430 Banks and Banking
`
`El 150 Recovery of Overpayment D 320 Assault, Libel nit
`Pharmaceutical
`.
`_
`_
`-
`El 450 Commerce
`
`
`:2;
`‘-
`'
`.
`& Enforcement of Judgment
`Slander
`Personal Injury
`El 320
`pyriglnu
`El 460 Deportation
`
`
`El 830 Patent
`El 330 Federal Employers’
`Product Liability
`El 151 Medicare Act
`Cl 470 Racketeer Influenced an
`
`H 840 Tradernark
`Liability
`El 368 Asbestos Personal
`El 152 Recovery ofDefaulted
`Corrupt Organizations
`
`III 340 Marine
`Injury Product
`Student Loans
`El 480 Consumer Credit
`
`El 345 Marine Product
`Liability
`‘.5
`..— ..
`.._
`"(E_xcl. Veterans)
`Cl 490 Cablefsat TV
`_
`
`
`Liability
`PERSONAL PROPERTY El 710 Fair Labor Standards
`.
`El 861 HIA (13951?)
`g 3 Recovery of Overpayment
`D 850 Socuritieslcommoditicsl
`El 350 Motor Vehicle
`$3 '-~’-:di"Vete'ran’s Benefits
`III 370 Other Fraud
`[1 362 Black Lung (923)
`Exchange
`Act
`',lk6§l'_SlDckhulders‘ Suits
`D 355 Motor Vehicle
`CI 3?! Truth in Lending
`El 720 LaborfMgmt. Relations
`El _863 DIWCIDIWW (405(g))
`Cl 890 Other Statutory Actions
`'EJ,"l90_Other Contract
`Product Liability
`0 330 Other Personal
`D 140 Railway Labor Act
`0 864 SSID Title XVI
`D 391 AgI1'cultI.IraIActs‘“"“
`
`'
`|3:l'--l9§"Contract Product Liability
`Cl 360 Other Personal
`Property Damage
`El 1'51 Family and Medical
`D 365 RS! (40S(_g))
`El 393 Envirorunental Matte‘
`El 895 Freedom of lnfonnation
`CI 196 Franchise
`Injury
`0 385 Property Damage
`Leave Act
`5'
`5'
`r1 |
`:
`-
`D 362 Personal Injury -
`Product Liability
`U 790 Other Labor Litigation
`Act
`
`
`
`"
`D 191 Empl. Ret. lac.
`=
`tic:
`CI 896 Arbitration
`El 899 Administrative Proced
`__.._,._..é_'{5"W"'-"W _t_,_ ‘J
`-.
`'
`.-
`‘
`Security Act
`,,__._,
`
`
`
`El 510 Motions to Vacate
`Acrllteview or Appeal of
`D 440 Other Civr Rig ts
`
`Sentence
`or Defendant)
`Agency Decision
`'
`Cl 44! Voting
`Habeas Corpus:
`III 87] IRS—Third Party
`E] 950 Constitutionality of
`D 442 Employment
`_ El 530 General
`26 USC 1609
`State Statutes
`CI 443 Housing}
`El 535 Death Penalty
`Accomniodations
`Cl 445 Amer. wIDisabilities - B 540 Mandamus & Other
`Employment
`D 550 Civil Rights
`El 446 Amer. wlDisabilit:ies - D 555 Prison Condition
`Other
`El 560 Civil Detainee -
`Conditions of
`III 448 Education
`Confinement
`
`‘
`
`_
`
`
`
`
`
`
`
`.«
`as
`‘ 9
`El 462 Naturalization Application
`- El 463 Habeas Corpus —
`Alien Detainee
`(Prisoner Petition)
`El 465 Other lrnrnigration
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`-"ii i-EDNY Revision 12/2011
`'
`CERTIFICATION OF ARBITRATION ELIGIBILITY
`
`-
`
`"."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?
`
`, do hereby certify that the above captioned civil action is
`
`the complaint seeks injunctive relief, the matter is otherwise ineligible for the following reason
`
`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‘ _
`
`._
`
`:
`
`.
`
`I
`
`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.”
`
`
`
`'
`
`i
`
`I
`
`2.
`
`‘_‘”’: C"-1 .)
`
`'
`
`g 2.)
`_
`
`NY-E DIVISION or BUSINESS RULE S0.1(d)[2)
`
`Is the civil action being filed in the Eastern District removed from aNew York State Court located in Nassau or Suffolk
`County: N0
`r
`
`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
`
`b) Did the events of omissions giving rise to the claim or claims, or a substantial part thereof, occur in the Eastern
`District? ‘'95
`
`"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
`
`hr Suffolk County?
`(Note: A corporation shall be considered a resident of the County in which it has the most significant contacts).
`
`'
`
`=
`
`BAR ADMISSION
`
`, 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
`
`"i
`
`‘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
`
`
`
`-
`
`’
`
`E
`i
`
`

`
`IN THE UNITED STATEQIEZRIHET
`
`
`-
`
`—*
`
`1-800—FLOWER.S.COM, INC.,
`
`1N
`
`g
`
`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.
`‘"""
`
`
`COMPLAINT FOR DECLARATORY JUDGM ‘
`
`FOR THE EASTERN DISTRICT OF NEW YORK
`RECEIVED
`OFT-1cE
`
`Plaintiff,
`
`
`
`
`
`5
`
`‘" _ ,,
`
`Plaintiff 1—800—Flowers.com, Inc. (“Plaintiff”) alleges the following for its Complaint for
`
`Declaratory Judgment against Defendant Edible Arrangements, LLC (“Defendant”).
`
`SUBSTANCE OF THE ACTION
`
`1.
`
`This is an action, pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et
`
`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
`
`otherwise interfere with, the asserted rights of Defendant, and that Plaintiffs acts have not
`
`violated and do not Violate federal or state laws relating to trademark infringement, unfair
`
`competition, or deceptive-trade practices, including without limitation Sections 32 and _43(a) of
`
`the Lanham Act, 15 U.S..C. §§. 1114 and 1125(a), or the statutory or common law of the State of
`
`New York or the laws of other States.
`
`THE PARTIES
`
`2.
`
`Plaintiff 1-800-Flowerscom, Inc.
`
`is a Delaware corporation with its principal
`
`place of business located in this District at 1 Old C0unt1"'y_Road,sSuite 500, Carle Place, New
`
`York, 11514.
`
`

`
`3.
`
`Defendant Edible Arrangements, LLC is a limited liability company organized
`
`under the laws of Connecticut with its principal place of business located at 95 Barnes Road,
`
`Wallingford, Connecticut, 06492. On information and belief, Defendant does substantial
`
`business in the State of New York and in this District.
`
`JURISDICTION AND VENUE
`
`4.
`
`-
`
`This Court has jurisdiction over the subject matter of this action under Section 39
`
`ofthe Lanham Act, 15 U.S.C. § 1121, under 28 U.S.C. §§ 1331 and 1338, and under 28 U.S.C. §
`
`2201.
`
`5.
`
`This Court has personal jurisdiction over the parties because Plaintiff has its
`
`principal place of business in this District, and Defendant regularly transacts business in this
`
`District or has otherwise made or established contacts with this District for personal jurisdiction
`
`to be consistent with the Constitution and NY. Civil Practice Law Rules §§ 301 and 302.
`
`6.
`
`Venue is proper under 28 U.S.C. § l39l(b) and (c) because a substantial part of
`
`the events giving rise to the claim in this case occurred in this District, Plaintiff has a principal
`
`place of business in this District, and Defendant does business in this District.
`
`FACTUAL BACKGROUND
`
`Plaintiff and Its BOUQ QUET OF FRUITS and FRUIT BOUQ QUETS Marks
`
`7.
`
`For decades, Plaintiff 1-800-Flowersconi, Inc., together with its predecessors and
`
`licensees, has provid