IP Law Daily, TRADEMARK—S.D.N.Y.: Trademark infringement and unfair competition claims survive dismissal in cold-brew coffee lawsuit, (Jul 30, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The district court found that the claims for trademark infringement and unfair competition under Section 43(a) of the Lanham Act and New York common law were sufficiently pled.

The U.S. District Court for the Southern District of New York denied the Chobani, LLC’s motion to dismiss the complaint against it for infringement of an unregistered trademark and unfair competition under Section 43(a) of the Lanham Act, and for trademark infringement and unfair competition under New York common law because the complaint plausibly alleged these claims. The district court found that the complaint plausibly alleged that Chobani acted in bad faith when it allegedly adopted Danone’s BRIGHT & MELLOW trademark (Danone US, LLC v. Chobani, LLC, No. 1:25-cv-06217-JLR (S.D.N.Y. Jul. 27, 2026)).

Danone US, LLC and WhiteWave Services, Inc. (together, Danone) sells ready-to-drink (RTD) coffee products, including an unsweetened, light roast RTD coffee sold under Danone’s STōK Cold Brew brand (Product). Since its January 2021 launch, the Product has been marketed with the phrase “BRIGHT & MELLOW,” which Danone contended functions as both the product’s flavor name and trademark. The Product’s packaging displayed the phrase on a yellow label, along with the STōK trademark, the words “cold brew coffee,” and roast-level information identifying the product as a “Lighter Roast.” Chobani, LLC (Chobani) through its ownership of La Colombe, sells competing RTD cold brew coffee. Before Chobani acquired La Colombe, La Colombe sold a yellow RTD light roast Colombian cold brew product. In spring 2021, La Colombe updated the product’s packaging, changing the reported roast level from light to medium, and adding the phrase “Bright & Flavorful.”

Danone contended that, following Chobani’s December 2023 acquisition of La Colombe, Chobani again revised the La Colombe product packaging altering the branding in several material respects to more closely match that of the Product. Specifically, Chobani removed the blue band from the bottle, changed the label color, added a longer vertical band running from the cap area, changed the roast level back to light roast, and, most notably, replaced “Bright & Flavorful” with “Bright & Mellow.” Danone alleged that the use of “Bright & Mellow” on the rebranded Chobani product (Infringing Product) is “confusingly similar” to Danone’s BRIGHT & MELLOW trademark.

Danone filed a complaint against Chobani for infringement of an unregistered trademark and unfair competition under Section 43(a) of the Lanham Act, and trademark infringement and unfair competition under New York common law. Chobani moved to dismiss the complaint pursuant to Federal Rule of Civil Procedure (Rule) 12(b)(6) for failure to state a claim on which relief can be granted.

Trademark Infringement. To prevail on a claim for trademark infringement under the Lanham Act, Danone must show that they have a valid, enforceable mark entitled to protection under the Act, and that Chobani’s use of the mark creates a likelihood of confusion.

Valid trademark. Chobani principally argued that Danone cannot satisfy the first element of its trademark infringement claim because BRIGHT & MELLOW is generic or, at minimum, descriptive and lacking an adequately pleaded secondary meaning. Alternatively, Chobani argued that even if the Mark is suggestive and therefore entitled to a heightened level of protection, Danone is not using BRIGHT & MELLOW as a trademark, thereby rendering the Mark unprotectable. The district court disagreed because as a general matter, BRIGHT & MELLOW unlike, “RTD coffee,” “cold brew coffee,” or “light roast coffee” is not, on its face, indicative of a category of products. Further, the district court noted that whether Danone can establish secondary meaning if the BRIGHT & MELLOW mark is found to be descriptive remains to be seen, but at this early stage Danone’s allegations concerning marketing, sales, and publicity collectively support a plausible claim of secondary meaning. Accordingly, the district court does not hold as a matter of law at this stage that BRIGHT & MELLOW is unprotectable as merely descriptive without secondary meaning.

Additionally, the district court also noted that the complaint alleged that Danone selected BRIGHT & MELLOW as a unique product identifier, placed it at the top of the principal label, set it apart from surrounding wording in location and style, and used it consistently to identify one product within the STōK line. The incorporated images show BRIGHT & MELLOW displayed above the STōK house mark and highlighted and separated from the roast-level language appearing lower on the package. The district court determined that these allegations plausibly support source identifying use, at least at this stage. Thus, drawing all reasonable inferences for Danone, the complaint plausibly alleged use of BRIGHT & MELLOW as a trademark.

Likelihood of confusion. Chobani argued that Danone failed to plead likelihood of confusion. The district court determined that the eight Polaroid factors, considered individually, confirmed that Danone plausibly pleaded likelihood of confusion. In sum, four factors (similarity, proximity, bad faith, and consumer sophistication) favored Danone on the pleadings; three factors (bridging the gap, actual confusion, and quality) were neutral; and one factor (strength of mark) was either neutral or weakly favorable to Danone. Although, the factors will be more fully examined when the facts are developed, but at this stage, Danone plausibly pleaded likelihood of confusion.

Descriptive fair use. Chobani argued that regardless of how Danone uses the phrase, Chobani’s use of “Bright & Mellow” is protected under the fair use provision of the Lanham Act. This is an invocation of the affirmative defense of descriptive fair use and because fair use is an affirmative defense, the party asserting fair use bears the burden of proof. Descriptive fair use requires a showing of three elements: that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. Analysis of these elements often requires consideration of facts outside of the complaint and thus is inappropriate to resolve on a motion to dismiss. Nevertheless, the Second Circuit acknowledged the possibility of fair use being so clearly established by a complaint as to support dismissal. Here, at minimum, the third element was not conclusively established on the face of the complaint.

Danone alleged that, after acquiring La Colombe, Chobani engaged in “knowing, calculated, and systematic” infringement of Danone’s Mark. Chobani replaced the longstanding phrase “Bright & Flavorful” with Danone’s BRIGHT & MELLOW mark, changed the stated roast from medium to light, changed the bottle from bright yellow to a muted golden yellow, removed a distinctive blue band, and added a longer vertical band running from the cap after Danone had, for years, sold a competing product bearing the same phrase and similar visual presentation. These actions, Danone alleged, were “deliberate, willful, and in bad faith” and harmed the “goodwill and reputation of Danone’s business” and support a plausible inference of deliberate copying intended to capitalize on Danone’s goodwill and cause consumer confusion. Chobani may ultimately defeat this inference, but the district court cannot make that factual determination on this motion. Thus, good faith was directly contested by well pleaded factual allegations. Accordingly, Chobani’s fair use argument did not warrant dismissal.

Federal unfair competition and common law claims. The district court noted that because it denied the motion to dismiss the federal trademark infringement claim, Danone’s federal unfair competition and New York common law trademark infringement claims survive as well. However, Danone’s common law unfair competition claim is distinct insofar as it also requires a showing of bad faith. The district court determined that the complaint plausibly alleged that Chobani acted in bad faith when it allegedly adopted the BRIGHT & MELLOW language after years of Danone’s use, deliberately abandoned its prior “Bright & Flavorful” label in so doing, and contemporaneously altered multiple elements of its packaging to resemble that of Danone’s competing product, causing damage to the goodwill and reputation of Danone’s business, and these allegations were sufficient at this stage.

Accordingly, Chobani’s motion to dismiss was denied as to all four claims.

The Case is No. 1:25-cv-06217-JLR.

Judge: Rochon, J.

Attorneys: Andrew D. Gish (Gish PLLC) for Danone US, LLC. Brian Craig Ascher (Gibson, Dunn & Crutcher, LLP) for Chobani, LLC.

Companies: Danone US, LLC; Chobani, LLC

Cases: Trademark NewYorkNews