Trademarks and Apple Turnovers

On April 11, 2013, in Trademarks, by Brian A. Hall

You have to love a case that starts out by saying “This is a case about trademarks and apple turnovers.”  I love both.  The United States District Court of the Eastern District of Pennsylvania had to deal with both following Defendant’s Motion to Dismiss.  Plaintiff, Sweet Street Deserts, Inc., alleged that Defendant, Chudleigh’s Ltd, tortuously interfered with its business by wrongfully asserting a trademark right to an apple turnover product with a generic design.  Plaintiff had been asked by the restaurant chain, Applebee’s, to create an apple turnover dessert that would be sold in the restaurants.  Plaintiff, a bakery, sought to outsource the production, and it entered discussions with Defendant, another bakery.  Plaintiff ultimately chose not to use Defendant and decided to produce the product in-house.  Defendant learned of the same, and its attorneys sent a cease and desist letter to Applebee’s demanding that it stop selling the product offered by Plaintiff because it infringed upon Defendant’s incontestable trademark design for “a distinctive configuration for baked goods.”  Applebee’s chose to no longer sell Plaintiff’s product.

Plaintiff sought, among other things, declaratory judgment that its apple turnover does not infringe Defendant’s and that Defendant’s trademark is invalid.  The Court focused mostly upon whether the trademark cease and desist letter may amount to tortious interference, rather than be privileged.  The Court analyzed the “sham exception” to First Amendment protected right to petitioning activity.  In determining whether the letter was “objectively baseless” and “subjectively motivated” by anticompetitive intent, however, the Court also analyzed the underlying trademark issues.  In doing so, it did not yet determine whether the Defendant possessed protectable trademark rights.  However, it questioned whether a likelihood of confusion could exist given the differences in the products.  Nonetheless, it ultimately denied Defendant’s motion to dismiss as it relates to the declaratory judgment claims and tortious interference claims alleged by Plaintiff.

Plaintiff may not ultimately be successful in providing that Defendant’s incontestable trademark is generic, although I must say I have seen such a design many times before in my family’s kitchens and elsewhere.  Regardless, Plaintiff does not have to if it can establish no likelihood of confusion, which is strengthened when a mark is weak.  More importantly for this case, Plaintiff hopes to establish that the cease and desist letter had no legal merit and thus justify a finding of tortious interference.  While the result remains to be seen, this is a good case for trademark attorneys, and others, who regularly send cease and desist letters, or receive them.  Would this case be drastically different if the letter also, or only, went to Plaintiff?  I think so.

Sweet St. Deserts, Inc. v. Chudleigh’s Ltd., CIV.A. 12-3363, 2013 WL 1389760 (E.D. Pa. Apr. 4, 2013).


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