Antitrust Law Daily Wrap Up, ANTITRUST NEWS: 1-800-Flowers fires antitrust counterclaim back at Edible Arrangements, (Mar 6, 2015)

By Dan Selcke, J.D.

In 1-800-Flowers.com’s trademark dispute in the federal district court in New Haven, Connecticut with Edible Arrangements, 1-800-Flowers has fired back with a counterclaim containing antitrust law counts.

The fruit bouquet business. Edible Arrangements International, LLC and 1-800-Flowers.com (“1-800-Flowers), Inc. both sell edible fruit arrangements, also known as fruit bouquets, online. According to 1-800-Flowers, Edible controls about 80% of the market for these products. When 1-800-Flowers got into the business, it filed six trademark applications to protect its logo, a stylized strawberry and vine design, coupled with several word combinations, each of which included the words “fruit bouquets.”

Suit and countersuit. Edible, which claims it is closely associated with the term “bouquet,” brought suit against 1-800-Flowers in which it claimed that the “daisy design” logo infringed on its trademarks. Edible also claimed that 1-800-Flowers’ website, FruitBouquets.com, was intended to confuse consumers into thinking that 1-800-Flowers was tied to Edible. In response, 1-800-Flowers filed an antitrust counterclaim seeking, among other things, damages and injunctive relief for Edible’s unfair and anticompetitive activities, which were allegedly committed in violation of the Sherman Act, 15 U.S.C. Section 2, and Connecticut General Statutes Section 42-110b et seq.

1-800-Flowers’ allegations. In its counterclaims, 1-800-Flowers accused Edible of having applied to the USPTO to trademark multiple non-distinctive, and therefore unprotectable, terms, including “edible,” “edible arrangements,” and a series of “bouquet” phrases. For example, Edible had applied to trademark different kinds of bouquets (e.g. Berry Chocolate Bouquet, Chocolate Banana Bouquet) and was told repeatedly that it could not claim exclusive rights in the term “bouquet” because other companies needed it to describe their goods. However, because Edible repeatedly misrepresented to the USTPO that it had made substantially exclusive use of the term “bouquet,” the company was still granted some of these trademarks. 1-800-Flowers also alleged that Edible wrongly obtained trademarks in the terms “edible” and “edible arrangements,” both of which were generic terms that had previously been used by other companies in the business, a fact Edible knew when it applied for them.

According to the counterclaim, which contains counts for monopolization and attempted monopolization in violation of the Sherman Act, Edible filed its fundamentally baseless suit against 1-800-Flowers despite knowing that Edible had no right to the trademarks it claimed 1-800-Flowers was infringing upon. Nor was this the first time Edible had been involved with infringement litigation, according to 800-Flowers. The company pointed to a past lawsuit for unfair competition and infringement between Edible Arrangements by Incredibly Edible, a former competitor. In the settlement agreement for that case, Edible Arrangement agreed that Incredibly Edible could use the terms “edible” and “arrangement” in its marketing and advertising, thereby admitting that use of those words by its competitors was appropriate.

Since that case settled, Edible Arrangements has filed or threatened to file numerous trademark infringement suits against companies that use some combination of the terms “edible,” “arrangements,” and “bouquets” in their advertising. These include small, independent distributors used and relied on by 1-800-Flowers that cannot afford to fight Edible’s claims in court. If Edible is allowed to continue to do this, 1-800-Flowers argued, it will force these companies out of business, Edible will establish itself as a monopoly (assuming it has not already), and the fruit bouquet marketplace will cool.

Prayer for relief. In addition to its claim for damages, 1-800-Flowers sought a declaratory judgment that it could use the terms and designs over which Edible’s asserted trademark rights, including the terms “edible,” “edible fruit arrangements,” “fruit bouquets,” and its “daisy design” logo. It also wanted a declaratory judgment that Edible did not own the “bouquet” family of marks, much less had exclusive rights in the word “bouquet.” Finally, 1-800-Flowers wanted the court to order the cancellation of Edible’s improperly obtained and misused trademark registrations, pursuant to the Lanham Act, 15 U.S.C. Section 1119.

The counterclaim in Edible Arrangements International, LLC v. 1-800-Flowers.com, Inc., Case No. 3:14-CV-01744 (MPS), was filed February 27, 2015.

News: Antitrust ConnecticutNews