IP Law Daily, TRADEMARK—S.D.N.Y.: Ice cream snack maker moves forward with attempted monopolization, tortious interference counterclaims, (Sep 18, 2025)

By Cathleen Calhoun, J.D.

A seller of bite-sized chocolate-filled waffle cone snacks persuaded Target to stop offering its competitor’s product, resulting in legal action.

An ice cream company’s motion to dismiss counterclaims by a competitor for tortious interference regarding its relationship with the Target Corporation (Target), and for attempted monopolization, was denied by the federal district court in New York City. The two companies sell ice cream mini cones that are purported to replicate the last chocolate-filled bite of a traditional sundae cone from an ice cream truck. Muddy Bites began selling its product MUDDY BITES® in 2019 and Evergreen, the competitor, began its sales under the label “Just the Fun Part” and others in 2021. Muddy Bites sued Evergreen claiming infringement on its registered mini-cone trade dress. Evergreen alleged that Muddy Bites procured its trademark through fraud and counterclaimed for the cancellation of Muddy Bites’ trademark registration, tortious interference, and attempted monopolization. Ruling only on the counterclaims, the court found that Evergreen had alleged sufficient facts to plead a tortious interference claim with respect to Target, and alleged sufficient facts to adequately allege a dangerous probability of achieving monopoly power (Muddy Bites Inc. v. Evergreen, No. 24-cv-07089 (LAK) (S.D.N.Y. Sept. 17, 2025)).

PTO registration. On May 16, 2023, Muddy Bites’ mini-cone trade dress was registered on the Supplemental Register. After that, Muddy Bites’ head of marketing made a sworn declaration that stated that the mini-cone design had “become distinctive... through its substantially exclusive and continuous use in commerce for at least five years[.]” Evergreen alleged that the declaration was knowingly false because the head of marketing knew that many companies, including Evergreen, were selling comparable mini-cone snack products at the time. The U.S. Patent and Trademark Office (PTO) registered the design on the Principal Register on September 3, 2024, and Muddy Bites filed action against Evergreen on September 18, 2024.

Emails to Target. Muddy Bites’ chief executive officer (CEO) emailed Target, one of Evergreen’s largest customers, twice. In the second email, in November 2024, he wrote, “Our goal in reaching out to Target was to share that the Patent and Trademark Office recognized the distinctiveness of our mini-cone snack design…as reflected in the attached trademark registration. We are taking measures to enforce these and other IP rights, including through the attached lawsuit… Target is of course a world-class brand and we do not believe that it would knowingly sell products that infringe others’ intellectual property rights…” On April 17, 2025, Target cancelled certain Evergreen orders, citing the “noise around the IP claims.”

Noerr-Pennington immunity. Muddy Bites argued that Evergreen’s antitrust and tortious interference counterclaims are barred by the First Amendment under the Noerr-Pennington doctrine. However, the court found that it was not clear that Evergreen’s claims are barred as a matter of law. According to the court, if, as Evergreen alleged, Muddy Bites knowingly made fraudulent misrepresentations to the PTO, Muddy Bites “purported petitioning activity” may be rendered “a sham not protected from antitrust liability.”

Tortious interference counterclaim. On its tortious interference with a contract counterclaim, Evergreen failed to state a claim, the court held, since it did not allege the specific terms of the contracts allegedly breached, and it failed to sufficiently to allege actual breach of a contract. However, Evergreen adequately pleaded tortious interference with Target. “It alleges an ongoing business relationship with Target, intentional interference with the relationship through the quoted email outreach, and injury to that relationship.”

The court also found that Evergreen failed to state a claim for tortious interference of a business relationship with any customer other than Target.

Antitrust counterclaim. Muddy Bites argued that Evergreen’s antitrust claim was inadequately pled, but the court disagreed. Evergreen contended that it alleged sufficient facts to state a claim for liability under the Walker Process rule. To prevail on a Walker Process claim, the antitrust-plaintiff must first show that the antitrust-defendant obtained the patent by knowing and willful fraud on the patent office and maintained and enforced the patent with knowledge of the fraudulent procurement; and second, all other elements necessary to establish a Sherman Act monopolization claim. Evergreen alleged that the PTO relied on the purported fraudulent statement from Muddy Bites’ head of marketing in issuing the registration. As a result, Evergreen stated sufficient facts to satisfy the first prong of the Walker Process test.

Other attempted monopolization elements. The court also found that Evergreen adequately pleaded that Muddy Bites engaged in predatory or anticompetitive conduct with a specific intent to monopolize. Evergreen alleged that Muddy Bites fraudulently procured a trademark registration and then attempted to enforce that fraudulently procured trademark registration to exclude its competitors through a lawsuit and coordinated outreach to Evergreen’s customers. Also, Evergreen identified the relevant market as the “mini-cone snack market” in the United States. The court held that Evergreen had alleged sufficient facts to allege adequately a dangerous probability of achieving monopoly power.

The case is No. 24-cv-07089 (LAK).

Attorneys: J. Noah Hagey (BraunHagey & Borden LLP) for Muddy Bites, Inc. David S. Gold (ColeScholtz P.C.) for Evergreen USA LLC.

Companies: Muddy Bites, Inc.; Evergreen USA LLC

Cases: Trademark NewYorkNews