1-800-FLOWERS adopted its “Fruit Bouquet” marks in July 2011 and was making seemingly widespread use by December 2011. It filed applications and Edible Arrangements filed notices of opposition in February 2012. It apparently DID NOT send any communication to Flowers other than the Notices. Counsel for Flowers calls counsel for Edible Arrangements March 1 2012. Flowers says that Edible said in that call that it was protesting use of the marks, in addition to merely opposing the applications. Edible disputes that characterization of the conversation. Flowers brings a declaratory judgement. Edible moves to dismiss.

Ok. First, the standard is “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune v Genentech, 549 U.S. 118, 127 (2007) (rejecting the ‘reasonable-apprehension-of-suit’ standard).

Now, its well-settled that the mere filing of a TTAB proceeding doesn’t by itself meet the standard. However, here, Flowers alleged that Edible had exceeded the language necessary in a properly-pled notice, and had included allegations that Edible would be harmed by Flowers’ use of the marks. Furthermore, Edible’s attorney had allegedly indicated in the phone call that Edible was protesting Flowers’ use.

The Court discussed prior cases where there had been a substantial controversy warranting a DJ. In two cases, defendant had sent demand letters. In the third, it had telephoned plaintiff and said “we have causes of action against you.” Here, there had been no affirmative demand on the party of Edible. The Court downplayed the phone call, in part because the conversation had been initiated by Flowers. Also, the ‘excessive language’ argument was rejected (perhaps because it would, in practice, swallow up the TTAB DJ exception).

DJ action dismissed.

1-800-Flowers.com v Edible Arrangements, 12 CV 1483 (DRH) (ARL) (EDNY Nov. 28, 2012)

800 flwoers v edible arrangement
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