United States District Court, E.D. New York
Gallagher, Walker, Bianco & Plastaras by Thomas E. Plastaras, Esq., Mineola, NY, Kilpatrick Townsend & Stockton LLP, by Judith A. Powell, Esq. (Pro Hac Vice), Atlanta, GA, for Plaintiff.
Cowan, Liebowitz & Latman, P.C. by Meichelle R. MacGregor, Esq., Scott P. Ceresia, Esq., New York, NY, for Defendant.
MEMORANDUM AND ORDER
HURLEY, Senior District Judge:
Plaintiff 1-800-Flowers.com, Inc. (" plaintiff" ) commenced this action pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., and seeks a declaratory judgment that plaintiff's " use of its trademarks has not infringed or interfered with" defendant Edible Arrangements, LLC's asserted rights and does not violate Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a). (Compl. ¶ 1.) Presently before the Court is defendant's motion seeking dismissal of the Complaint pursuant to Federal Rule of Civil Procedure (" Rule" ) 12(b)(1) or, in the alternative, the Court's discretionary power under the Declaratory Judgement Act. For the reasons set forth below, defendant's motion is granted.
The Parties and Their Respective Marks
Plaintiff provides a nationwide floral product and gift delivery service for customers throughout the United States. In the spring of 2011, plaintiff decided to " enter the business of creating and delivering fresh cut fruit arrangements." (Compl. ¶ 8.) In July 2011, plaintiff began using several variations of its mark " Fruit Bouquets," " together with a distinctive stylized strawberry and vine design," (collectively, the " Fruit Bouquets Marks" ), in connection with its marketing, sale, and delivery of the fresh cut fruit arrangements." ( Id. ) By December 2011, plaintiff " was selling goods and services" under its Fruit Bouquets Marks in more than 25 markets throughout the country. ( Id. ¶ 10.) Overall, plaintiff has spent " tens of thousands of dollars in marketing goods and services provided under the [Fruit Bouquets Marks]." ( Id. ¶ 11.)
Defendant is " in the business of marketing, selling, and delivering fruit arrangements and dipped fruit gift items, as well as selling fruit salads and fruit beverages" at " over 1100 locations within and outside the United States." ( Id. ¶ 15.) Defendant also owns a " number of registrations" for other marks that it uses in connection with its business (collectively, the " Berry Marks" ). ( Id. ¶¶ 16-18.)
Plaintiff's Applications for Trademark Registration of the Fruit Bouquets Marks
Between May and November 2011, plaintiff filed applications with the United
States Patent and Trademark Office (" PTO" ) (the " Applications" ) seeking to register several versions of the Fruit Bouquets Marks. ( Id. ¶ 8.) Each of the Applications was approved by the PTO for publication. ( Id. ¶ 9.)
Thereafter, on February 11, 2012, defendant filed notices of opposition against all of the Applications (collectively, the " Oppositions" ) with the PTO's Trademark Trial and Appeal Board (" TTAB" ). ( Id. ¶ 23.) In the Oppositions, defendant " contends it ‘ will be damaged by the use and registration’ of Plaintiff's FRUIT BOUQUETS Marks. In particular, Defendant claims that there is a likelihood of confusion between its BERRY Marks and Plaintiff's FRUIT BOUQUETS Marks...." ( Id. ¶ 24 (citing Ex. K).) Plaintiff asserts that, as of the date it commenced this action, it has been using its Fruit Bouquets Marks for eight months " and has not learned of a single instance of consumer confusion resulting from Plaintiff's and Defendant's use of their respective marks on their respective goods and services." ( Id. ¶ 26.)
The March 1, 2012 Telephone Conversation Between the Parties' Counsel
On March 1, 2012, plaintiff's counsel, Thomas M. Galgano, spoke by telephone with defendant's counsel, Julianne Bochinski, to address the Applications and Oppositions pending before the TTAB. During that conversation, Mr. Galgano asked " whether there was an issue respecting the [ ] Applications that might be rectified by Plaintiff making some change in the design element of" the Fruit Bouquet Marks. (Decl. of Thomas M. Galgano, dated June 29, 2012 (" Galgano Decl." ) ¶ 6.) Ms. Bochinski indicated that " there was no such change acceptable to Defendant." ( Id. )
According to Mr. Galgano, he then inquired as to the " nature of Defendant's objection," and Ms. Bochinski responded by " indicat[ing] that Edible Arrangements objects to 1-800-Flowers' using the marks, making it clear that Defendant not only objected to Plaintiff's registration of its [ ] FRUIT BOUQUETS Marks, but also to Plaintiff's use of the marks." ( Id. ¶ 7.) Ms. Bochinski " did not suggest that Edible Arrangements' objection to the use of the [Fruit Bouquets] Marks could be addressed through ...