Antitrust Law Daily Wrap Up, ANTITRUST NEWS: Edible Arrangements seeks dismissal of antitrust counterclaims in trademark suit, (Jun 9, 2015)

By Linda O’Brien, J.D., LL.M.

In a trademark infringement action by Edible Arrangements against rival gourmet food retailer 1-800-Flowers.com, antitrust counterclaims alleging that Edible Arrangements lacks protectable trademark rights and asserted objectively baseless claims should be barred by the Noerr-Pennington doctrine, according to the plaintiffs’ motion to dismiss filed in the federal district court in Hartford, Connecticut (Edible Arrangements International, LLC v. 1-800-Flowers.com, Inc., June 5, 2015).

Edible Arrangements and 1-800-Flowers compete in the market for online sales of edible fruit arrangements. In November 2014, Edible Arrangements filed suit against 1-800-Flowers for infringement of its registered trademarks. In February 2015, 1-800-Flowers filed a counterclaim, alleging that Edible Arrangements used sham litigation based on improperly obtained trademark registrations to suppress competition.

According to the memorandum in support of the motion, the plaintiffs’ efforts to protect its federally registered trademarks fall within the scope of Noerr-Pennington immunity. Efforts to protect a registered trademark cannot be the basis for an antitrust claim absent bad faith. The defendant’s counterclaim is silent on the plaintiffs’ “DO FRUIT” marks and six “EDIBLE” marks, and does not seek to cancel an additional 13 “BOUQUET” marks. By not seeking to cancel these 22 markets, the defendant has conceded their validity. Therefore, the plaintiffs’ meritorious claims cannot be “objectively baseless,” according to the memorandum.

Additionally, the defendant has not alleged a pattern or series of sham litigation, Edible Arrangements argued. Allegations that four lawsuits by the plaintiffs directed at different entities involving claims unrelated to the plaintiffs’ trademarks over the course of 13 years formed the basis of a pattern are not sufficient to vitiate Noerr-Pennington immunity, the memorandum maintained. Furthermore, none of the four lawsuits have been challenged by the defendants as “objectively baseless.”

Finally, the motion states that the defendant’s claim regarding purported misconduct before the U.S. Patent and Trademark Office are legally insufficient. The defendant’s allegations that Edible Arrangements engaged in improper conduct standing alone cannot, as a matter of law, vitiate Noerr-Pennington immunity.

The case is No. 3:14-cv-01744-MPS.

Attorneys: Susan S. Murphy (Shipman & Goodwin) for Edible Arrangements International, LLC, and Edible Arrangements LLC. James W. Faris (Kilpatrick Townsend & Stockton) for 1-800-Flowers.com, Inc.

Companies: Edible Arrangements International, LLC; Edible Arrangements LLC; 1-800-Flowers.com, Inc.

News: Antitrust ConnecticutNews