Soft Serve Fruit Co. LLC v. BC Hospitality Group LLC et al
| Soft Serve Fruit Co. LLC |
| Esquared Hospitality LLC and BC Hospitality Group LLC |
| 1:2017cv09735 |
| December 12, 2017 |
| US District Court for the Southern District of New York |
| Foley Square Office |
| Edgardo Ramos |
| Trademark |
| 15 U.S.C. § 1125 la Trademark Infringement (Lanham Act) |
| None |
Docket Report
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| Terminate Transcript Deadlines (tro) |
| Filing 30 STIPULATION OF VOLUNTARY DISMISSAL It is hereby stipulated and agreed by and between the parties and/or their respective counsel(s) that the above-captioned action is voluntarily dismissed, WITH prejudice against the defendant(s) BC Hospitality Group LLC, Esquared Hospitality LLC and WITHOUT costs to either party pursuant to Rule 41(a)(1)(A)(ii) of the Federal Rules of Civil Procedure. Document filed by Soft Serve Fruit Co. LLC.(Popp-Rosenberg, Laura) |
Filing 29
ORDER granting #28 Letter Motion for Extension of Time to File Response/Reply. Plaintiff's time to respond to the counterclaims is hereby extended to February 27, 2018. (HEREBY ORDERED by Judge Edgardo Ramos)(Text Only Order) (Ramos, Edgardo)
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| Set/Reset Deadlines: Soft Serve Fruit Co. LLC answer due 2/27/2018. (jar) |
| Filing 28 LETTER MOTION for Extension of Time to File Response/Reply to counterclaim asserted in the Answer and Counterclaim addressed to Judge Edgardo Ramos from Laura Popp-Rosenberg dated 02/12/2018. Document filed by Soft Serve Fruit Co. LLC.(Popp-Rosenberg, Laura) |
| Filing 27 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent ESquared Holdings LLC for Esquared Hospitality LLC, Esquared Hospitality LLC. Document filed by Esquared Hospitality LLC.(Mandel, Richard) |
| Filing 26 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent Esquared Hospitality LLC for BC Hospitality Group LLC, BC Hospitality Group LLC. Document filed by BC Hospitality Group LLC.(Mandel, Richard) |
| ***NOTICE TO ATTORNEY TO RE-FILE DOCUMENT - DEFICIENT DOCKET ENTRY ERROR. Notice to Attorney Richard Stephen Mandel to RE-FILE Document #24 Rule 7.1 Corporate Disclosure Statement,. ERROR(S): Not All Corporate Parents were added. Please re-file this document and when prompted: Are there any corporate parents or other affiliates?, select the YES radio button and enter the Corporate Parent(s) or Affiliate(s) one party name at a time. (lb) |
| Filing 25 ANSWER to #1 Complaint., COUNTERCLAIM against Soft Serve Fruit Co. LLC. Document filed by Esquared Hospitality LLC, BC Hospitality Group LLC.(Mandel, Richard) |
| Filing 24 FILING ERROR - NOT ALL CORPORATE PARENTS/OTHER AFFILIATES WERE ADDED - RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent ESquared Holdings LLC for Esquared Hospitality LLC. Document filed by BC Hospitality Group LLC, Esquared Hospitality LLC.(Mandel, Richard) Modified on 1/24/2018 (lb). |
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Filing 23
STIPULATION AND ORDER REGARDING TEMPORARY RESTRAINING ORDER AND ORDER TO SHOW CAUSE FOR PRELIMINARY INJUNCTION: NOW THEREFORE, the parties stipulate and agree as follows; Pursuant to Federal Rule of Civil Procedure 65(b)(2), Defendants consent to extension of the TRO Order up until the time that the Court renders its decision on Plaintiff's motion for preliminary injunction. The parties agree that all terms of the TRO Order remain in force and effect, and that the bond posted by Plaintiff will remain in place, up until the time that the Court renders its decision on Plaintiff's motion for preliminary injunction. Defendants' brief and all supporting documents in opposition to Plaintiff's motion for preliminary injunction will be filed on or before 5 pm on February 28, 2018, and Plaintiff's reply brief and all supporting documents in further support of its motion for preliminary injunction will be filed on or before 5 pm on March 22, 2018, and as further set forth in this order. (Responses due by 2/28/2018, Replies due by 3/22/2018.) (Signed by Judge Edgardo Ramos on 1/17/2018) (jwh)
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Filing 22
ORDER granting #21 Letter Motion for Extension of Time: This application is granted. The preliminary injunction hearing is hereby scheduled for April 5, 2018 at 5:00pm. The Clerk of Court is respectfully directed to terminate the motion Doc. 21. (Signed by Judge Edgardo Ramos on 1/17/2018) (jwh)
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| Set/Reset Hearings: Show Cause Hearing set for 4/5/2018 at 05:00 PM before Judge Edgardo Ramos. (jwh) |
| Filing 21 LETTER MOTION for Extension of Time and Adjournment of Preliminary Injuction Hearing addressed to Judge Edgardo Ramos from Richard S. Mandel, Esq. dated 1/12/2017. Document filed by BC Hospitality Group LLC, Esquared Hospitality LLC. (Attachments: #1 Stipulation and proposed Order)(Mandel, Richard) |
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Filing 20
STIPULATION AND ORDER OF SUBSTITUTION OF COUNSEL: IT IS HEREBY STIPULATED, CONSENTED AND AGREED by and among the undersigned that the law firm of Cowan, Liebowitz & Latman, P.C., 114 West 47th Street, New York, New York 10036-1525, be substituted as attorneys for Defendants BC Hospitality Group LLC and Esquared Hospitality LLC ("Defendants") in the above-entitled action, and that the law firm of Dentons US LLP, 1221 Avenue of the Americas, New York, New York 10020-1089, be relieved of further responsibility as attorneys for Defendants. Attorney Richard M. Zuckerman terminated. (Signed by Judge Edgardo Ramos on 1/3/2018) (mro)
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Filing 19
ORDER with respect to #18 Letter Motion to Substitute Attorney. Defendants' time to answer is hereby extended until January 23, 2018. (Signed by Judge Edgardo Ramos on 1/3/2018) (mro)
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| Set/Reset Deadlines: BC Hospitality Group LLC answer due 1/23/2018; Esquared Hospitality LLC answer due 1/23/2018. (mro) |
| Filing 18 LETTER MOTION to Substitute Attorney. Old Attorney: Richard M. Zuckerman, New Attorney: Richard S. Mandel and extend time to file Answer addressed to Judge Edgardo Ramos from Richard S. Mandel dated 12/29/2017. Document filed by BC Hospitality Group LLC, Esquared Hospitality LLC. (Attachments: #1 Declaration of Richard Mandel, Esq. in Support of Substitution of Attorney, #2 Stipulation and proposed Order)(Mandel, Richard) |
| Filing 17 DECLARATION of BRIAN DEO in Support re: #3 Order to Show Cause,,,,,,,,,,,,. Document filed by Soft Serve Fruit Co. LLC. (Vosgerchian, Jessica) |
| Filing 16 NOTICE OF FILING OF OFFICIAL TRANSCRIPT Notice is hereby given that an official transcript of a conference proceeding held on 12/12/17 has been filed by the court reporter/transcriber in the above-captioned matter. The parties have seven (7) calendar days to file with the court a Notice of Intent to Request Redaction of this transcript. If no such Notice is filed, the transcript may be made remotely electronically available to the public without redaction after 90 calendar days...(McGuirk, Kelly) |
| Filing 15 TRANSCRIPT of Proceedings re: conference held on 12/12/2017 before Judge Edgardo Ramos. Court Reporter/Transcriber: Mary Agnes Drury, (212) 805-0300. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 1/10/2018. Redacted Transcript Deadline set for 1/22/2018. Release of Transcript Restriction set for 3/20/2018.(McGuirk, Kelly) |
| Filing 14 DECLARATION of Michael Sloan in Support re: #3 Order to Show Cause,,,,,,,,,,,,. Document filed by Soft Serve Fruit Co. LLC. (Attachments: #1 Exhibit 1 - Use of CHLOE marks, #2 Exhibit 2 - Example of Branding by Baylor University, #3 Exhibit 3 - Example of Branding by New York University, #4 Exhibit 4 - Photos of CHLOE'S products H-E-B store 2014, #5 Exhibit 5 - Samples of current CHLOE'S pops packaging, #6 Exhibit 6 - Samples of individual wrapper and sticks, #7 Exhibit 7 - Retail Food Channels, #8 Exhibit 8 - Map of US Retail, #9 Exhibit 9 - Examples of 3rd Party Retailer Ads, #10 Exhibit 10 - Examples of Articles re CHLOE'S brand, #11 Exhibit 11 - Trade publications re Retail Food Channels, #12 Exhibit 12 - Fortune article, #13 Exhibit 13 - 2012-2017 List of media articles re CHLOE'S brand, #14 Exhibit 14 - Articles re CHLOE'S top frozen snacks, #15 Exhibit 15 - 04.29.15 Letter, #16 Exhibit 16 - 05.06.15 Response Letter, #17 Exhibit 17 - Pics of Defendants non-dairy frozen dessert pints, #18 Exhibit 18 - labels of BY CHLOE frozen dessert products, #19 Exhibit 19 - 06.14.16 email, #20 Exhibit 20 - 11.21.16 email, #21 Exhibit 21 - 03.08.17 email, #22 Exhibit 22 - 06.30.17 email, #23 Exhibit 23 - 07.06.17 email, #24 Exhibit 24 - 10.16.17 email, #25 Exhibit 25 - 12.08.17 email, #26 Exhibit 26 - Social Media BY CHLOE Tags with CHLOE'S products, #27 Exhibit 27 - Dean and Deluca initial menu board, #28 Exhibit 28 - Dean and Deluca menu board change)(Vosgerchian, Jessica) |
| Filing 13 DECLARATION of Jordan Swensson in Support re: #3 Order to Show Cause,,,,,,,,,,,,. Document filed by Soft Serve Fruit Co. LLC. (Attachments: #1 Exhibit 1 - NYT email, #2 Exhibit 2 - Search for New York Times Articles)(Vosgerchian, Jessica) |
| Filing 12 DECLARATION of Randy Davids in Support re: #3 Order to Show Cause,,,,,,,,,,,,. Document filed by Soft Serve Fruit Co. LLC. (Vosgerchian, Jessica) |
| Filing 11 DECLARATION of Chloe Epstein in Support re: #3 Order to Show Cause,,,,,,,,,,,,. Document filed by Soft Serve Fruit Co. LLC. (Vosgerchian, Jessica) |
| Filing 10 MEMORANDUM OF LAW in Support re: #3 Order to Show Cause,,,,,,,,,,,, . Document filed by Soft Serve Fruit Co. LLC. (Vosgerchian, Jessica) |
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Filing 9
ORDER granting #8 Letter Motion for Extension of Time: The application is granted. The Court hereby adopts the parties' proposed briefing schedule. The December 27 hearing is adjourned to January 31, 2018 at 2:30 pm. With the consent, the Temporary Restraining Order is continued until January 31, 2018. (Signed by Judge Edgardo Ramos on 12/18/2017) (jwh)
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| Set/Reset Hearings: Show Cause Hearing set for 1/31/2018 at 02:30 PM before Judge Edgardo Ramos. Set/Reset Deadlines: Responses due by 1/15/2018, Replies due by 1/22/2018. (jwh) |
| Filing 8 LETTER MOTION for Extension of Time of the dates for the preliminary injunction addressed to Judge Edgardo Ramos from Richard M. Zuckerman dated 12/15/2017. Document filed by BC Hospitality Group LLC, Esquared Hospitality LLC.(Zuckerman, Richard) |
| Filing 7 SUMMONS RETURNED EXECUTED Summons and Complaint served. Esquared Hospitality LLC served on 12/14/2017, answer due 1/4/2018. Service was accepted by Richard Zuckerman, Esq.. Service was made by E-mail. Document filed by Soft Serve Fruit Co. LLC. (Vosgerchian, Jessica) |
| Filing 6 SUMMONS RETURNED EXECUTED Summons and Complaint served. BC Hospitality Group LLC served on 12/14/2017, answer due 1/4/2018. Service was accepted by Richard Zuckerman, Esq.. Service was made by E-mail. Document filed by Soft Serve Fruit Co. LLC. (Vosgerchian, Jessica) |
| Filing 5 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by Soft Serve Fruit Co. LLC.(Popp-Rosenberg, Laura) |
| Filing 4 TEMPORARY RESTRAINING ORDER BOND # CMS0269841 in the amount of $ 25,000.00 posted by Soft Serve Fruit Co. LLC. (dt) . |
| ***NOTE TO ATTORNEY TO E-MAIL PDF. Note to Attorney Barbara A. Solomon for noncompliance with Section 14.2 of the S.D.N.Y. Electronic Case Filing Rules & Instructions. E-MAIL the PDF for Document #2 Civil Cover Sheet, #1 Complaint to: caseopenings@nysd.uscourts.gov. (pc) |
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Filing 3
TEMPORARY RESTRAINING ORDER AND ORDER TO SHOW CAUSE FOR PRELIMINARY INJUNCTION: The Court having found from the specific facts set forth in the above-mentioned materials sufficient proof that: Plaintiff has acquired nationwide, common law trademark rights in the CHLOE'S mark through its use of the mark CHLOE'S in connection with its prepackaged frozen desserts sold to and through grocery stores, supermarkets, online grocery retailers and other food retailers (collectively, "Retail Food Channels" excluding defendants' restaurants and stores and product already sold to Blank Slate located in Manhattan, NY). IT IS ORDERED that, pending the hearing and determination of Plaintiff's application for a preliminary injunction, Defendants, and any companies owned or controlled by Defendants, and each of their officers, agents, privies, principals, directors, shareholders, managing agents, owners, licensees, distributors, servants, attorneys, employees, affiliates, subsidiaries, parents, successors and assigns, and all of those in active concert or participation with any of them who receive notice directly or otherwise, are hereby enjoined from: using Defendants' BY CHLOE or CHILL BY CHLOE marks, Plaintiff's CHLOE'S mark, any other mark that wholly incorporates CHLOE, or any other name or mark that is confusingly similar to Plaintiff's CHLOE'S mark, or is a derivation or colorable imitation thereof, regardless of whether used alone or with other terms (collectively, "Prohibited Marks") in connection with soliciting orders for, offering for sale, making available, selling, accepting offers for, filling orders for, promoting, advertising, marketing or distributing prepackaged frozen desserts to or through Retail Food Channels; as further set forth herein. IT IS FURTHER ORDERED that the Defendants appear before this Court in the in the courtroom of United States District Court Judge Ramos, Courtroom 619, at the United States Courthouse of the District Court of the Southern District of New York, on Wed. Dec. 27, 2017, at the time of 2:30, to show cause, if there be, why, pursuant to Rule 65 of the Federal Rules of Civil Procedure, Plaintiff should not be granted a preliminary injunction extending the terms of the temporary restraining order granted herein. IT IS FURTHER ORDERED that opposing papers, if any, shall be served by electronic mail or ECF on Plaintiff's counsel on or before Thurs. Dec. 21, 2017 at 5:00 PM, and reply papers, if any, shall be served by electronic mail or ECF on Defendants or their counsel on or before Tues., Dec. 26, 2017 at 5:00 PM. Security in the amount of $25,000 will be posted by 5 pm on December 13, 2017. On consent of the parties, this TRO will be extended to Wednesday, December 27, 2017. Show Cause Hearing set for 12/27/2017 at 02:30 PM in Courtroom 619, 40 Centre Street, New York, NY 10007 before Judge Edgardo Ramos. (Signed by Judge Edgardo Ramos on 12/12/2017) (mro) (Main Document 3 replaced on 12/15/2017) (jar). Modified on 12/15/2017 (jar).
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| Filing 2 CIVIL COVER SHEET filed. (pc) (laq). |
| Filing 1 COMPLAINT against BC Hospitality Group LLC, Esquared Hospitality LLC. (Filing Fee $ 400.00, Receipt Number 465401197400)Document filed by Soft Serve Fruit Co. LLC.(pc) (laq). |
| Magistrate Judge James L. Cott is so designated. Pursuant to 28 U.S.C. Section 636(c) and Fed. R. Civ. P. 73(b)(1) parties are notified that they may consent to proceed before a United States Magistrate Judge. Parties who wish to consent may access the necessary form at the following link: #http://nysd.uscourts.gov/forms.php. (pc) |
| ***NOTICE TO ATTORNEY TO SUBMIT AO 120 FORM PATENT/TRADEMARK. Notice to Attorney Laura E Popp-Rosenberg to submit a completed AO 120 Form Patent/Trademark to court for review. Use the event type AO 120 Form Patent/Trademark - Notice of Submission by Attorney found under the event list Other Documents. (pc) |
| SUMMONS ISSUED as to BC Hospitality Group LLC, Esquared Hospitality LLC. (pc) |
| Case Designated ECF. (pc) |
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