Opinion
Index 800817-2017
03-26-2019
THE ORIGINAL CRUNCH ROLL FACTORY LLC, Plaintiff, v. RONALD J. SANTORA, SANTORA FOODS, LLC, and FRUIT FRESH UP, INC., Defendants.
Unpublished Opinion
DECISION
HON. HENRY J. NOWAK, J.S.C.
On January 20, 2017, this court issued a temporary restraining order enjoining defendants from using the phrases "Dare to Crunch," "Original Crunch Roll," "Buffalo Chicken Crunch Roll," "Banana Pepper Crunch Roll," and "Hot Pepper Crunch Roll" in connection with their advertising, marketing, promotional materials, and packaging of its various products. Plaintiff moves for a preliminary injunction for that same relief and also to enjoin defendants from using the phrase "Crunch Roll." Defendants oppose that motion and move to vacate the temporary restraining order.
The court further enjoined defendants from using plaintiffs "proprietary trade secrets and confidential information, including the ingredients, recipe, process for production, know-how and manner, means and method of production" to produce and sell its own products. Defendants do not oppose that restriction, claiming that they use a different recipe and a different process to make a different product. Therefore, the only issue concerns defendants' use of the phrases plaintiff seeks to protect.
In addition to seeking injunctive relief in this court, plaintiff had applied for federal trademark protection of these phrases. While that application was pending, the court commenced a hearing and received testimony and evidence in regard to the motions on February 6, 2017, February 7, 2017 and March 2, 2017. On April 7, 2017, the United States Patent and Trademark Office (USPTO) denied plaintiffs application, refusing to register plaintiffs applied-for marks because the phrases merely described the nature of plaintiff s goods. Specifically, the USPTO determined the plaintiffs marks were merely descriptive because they described "an ingredient, quality, characteristic, function, feature, purpose, or use of [its] goods and/or services." Plaintiff did challenge the USPTO determination, and its application was deemed abandoned on November 3, 2017. Because plaintiffs federal application was denied, the lone issue before the court is whether New York common law protects the names associated with plaintiffs products.
After attempts to resolve the dispute were unsuccessful, the court scheduled a continuation of the hearing on February 13, 2018. The parties then agreed to suspend the hearing, and plaintiff later elected to not submit any additional evidence regarding the time and duration it used the trade names reflected in its request for the preliminary injunction. Along with the testimony and evidence from 2017, the court accepted and considered a June 29, 2018 letter brief and attached exhibits from defendants' counsel; a July 2, 2018 memorandum and attached exhibits from plaintiffs counsel; and a November 16, 2018 letter brief in reply from defendants' counsel.
At the hearing, plaintiffs general manager, Mark Bohn, testified that he created the crunch roll in approximately February 2015 at Bohn's, his family's restaurant in Batavia, New York. He continued to develop the recipe through trial and error, starting with an egg roll and experimenting with various flavors, crisping agents and batters. Using spicy chicken and cheese as a filling, he first sold the "Buffalo Chicken Crunch Roll" in May 2015 at Mac's on Hertel Avenue, in Buffalo, New York. The product was originally developed as a hot restaurant item, which was made fresh daily or every other day.
Over the next several months, the Buffalo Chicken Crunch Roll evolved into a frozen product. Bohn first used the term "Original Crunch Roll" in July 2015. By August 2015, Bohn had designed the "Banana Pepper Crunch Roll," which was a similar product with a banana pepper and cheese filling. Bohn sold both products out of Mac's and purchased "table tents" -folded cards to advertise the crunch rolls at that restaurant. In late 2015, Bohn began contemplating manufacturing the products on a larger scale. He looked to find a co-packer and began exploring other businesses that could manufacture his products.
In January 2016, Bohn met with defendant Ron Santora. Bohn and Santora agreed that the products would be made at defendant Santora Foods, LLC. Bohn shared recipes and production processes for the products, Santora modified the facility to free up space and to add freezers, and employees of Santora Foods, LLC were trained to manufacture the products.
Bohn testified that he discussed with Santora issues of confidentiality, trade secrets and non-competition, but no written agreements were ever made. Santora Foods, LLC began manufacturing crunch rolls for plaintiff in late February or early March 2016. At about that time, plaintiff acquired a food truck and used it to sell its products at large, public events. In the summer months of 2016, plaintiff also advertised the sale of its products in marketing brochures, product placement sheets, and marketing stickers. The Banana Pepper Crunch Roll was voted the best new product at the 2016 Wing Fest in Buffalo, New York, and plaintiff began marketing its products to independent restaurants.
To sell frozen crunch rolls to restaurants, plaintiff needed a "Hazard Analysis Critical Control Point" plan. Santora Foods, LLC prepared that plan and split the cost of its preparation with plaintiff. Plaintiff then began selling crunch rolls to local restaurants and provided them with additional advertising for their windows and tables.
Santora Foods, LLC continued to produce crunch rolls for plaintiff through September 15, 2016. The parties could not come to reasonable terms on finding an alternative manufacturing facility and terminated their relationship on September 20, 2016. Defendants began selling competing products by the October 2016. Defendants never agreed to refrain from independently using plaintiffs recipes and means of production, but even if they had, the evidence supported several differences between the ingredients and processes used by plaintiff and defendants.
Plaintiff claims that the phrases at issue should be protected under two theories - first, that they are inherently distinctive; second, that they acquired distinctiveness through secondary meaning (see Two Pesos, Inc. v Taco Cabana, Inc., 505 U.S. 763, 769 [1992]). To be inherently distinctive, a phrase or mark must identify its source. "Marks which are merely descriptive of a product are not inherently distinctive. When used to describe a product, they do not inherently identify a particular source, and hence cannot be protected" (id.). Considering the six phrases plaintiff seeks to protect, only "Original Crunch Roll," being part of plaintiff s name, identifies plaintiff as its source. The remaining phrases - "Crunch Roll," "Dare to Crunch, ""Buffalo Chicken Crunch Roll," "Banana Pepper Crunch Roll," and "Hot Pepper Crunch Roll" - are too generic or simply describe the ingredients in the goods. Therefore, the court finds such phrases to be incapable of inherently identifying and distinguishing plaintiff as their source.
Nonetheless, descriptive marks like the plaintiffs may be entitled to common-law trademark protection if they acquired secondary meaning by the time defendants entered the market (Therapy Prods., Inc. v Bissoon, 623 F.Supp.2d 485, 493 [SDNY 2009]; E.A. Sween Co., Inc. v A&M Deli Express, Inc., 2018 WL 1283682, *3 [EDNY 2018]; Greenpoint Fin. Corp. v Sperry & Hutchinson Co., Inc., 116 F.Supp.2d 405, 409 [SDNY 2000]). "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself (Inwood Laboratories v Ives Laboratories, 456 U.S. 844, 851 [1982]). In other words, the phrases must have become synonymous in the public's mind with The Original Crunch Roll Factory LLC (see Therapy Prods., Inc., 623 F.Supp.2d at 493-94; E.A. Sween Co., Inc., 2018 WL 1283682, *8; Greenpoint Fin. Corp., 116 F.Supp.2d at 409).
"[P]roof of secondary meaning entails vigorous evidentiary requirements" (Ralston Purina Co. v Thomas J. Lipton, Inc., 341 F.Supp. 129, 134 [SDNY 1972]). To determine whether a mark has acquired secondary meaning, courts "have examined advertising expenditures, consumer studies linking the name to a source, sales success, unsolicited media coverage of the product, attempts to plagiarize the mark, and length and exclusivity of the mark's use" (Thompson Med. Co., Inc. v Pfizer Inc., 753 F.2d 208, 217 [2d Cir 1985] [internal citations omitted]). "In assessing the existence of secondary meaning, no 'single factor is determinative,' and every element need not be proved" (id., quoting Am. Footwear Corp. v Gen. Footwear Co. Ltd., 609 F.2d 655, 663 [2d Cir 1979]).
At the hearing, plaintiff showed its use of each of the phrases at issue in advertising materials during the seventeen months before defendants began selling its competing products. However, plaintiff presented no evidence of a customer study or survey linking any of the phrases to the company itself, and plaintiffs use of the phrases were neither long-term nor exclusive. Plaintiff offered some testimony concerning sales success, unsolicited media coverage and defendants' attempts to use the phrases at issue. Nonetheless, plaintiff failed to meet the "vigorous evidentiary requirements" required to demonstrate secondary meaning, inasmuch as the evidence failed to show that members of the public identify the phrases "Crunch Roll," "Buffalo Chicken Crunch Roll," "Banana Pepper Crunch Roll," and "Hot Pepper Crunch Roll" with plaintiff instead of the products themselves (Ralston Purina Co., 341 F.Supp. at 134). Plaintiffs argument to protect "Dare to Crunch" is even more tenuous, as plaintiff failed to show that the public considers the slogan to be synonymous with its products (as opposed to other crunchy foods), much less the company. Therefore, the court finds that none of the phrases at issue acquired distinctiveness through secondary meaning.
Accordingly, this court grants plaintiffs motion for a preliminary injunction only with regard to the phrase "Original Crunch Roll," as the court finds that phrase to be inherently distinctive. The court denies plaintiffs motion to enjoin defendants from using the remaining phrases in connection with their advertising, marketing, promotional materials, and packaging, and grants defendants' motion to vacate the temporary restraining order to refrain from using "Dare to Crunch, ""Buffalo Chicken Crunch Roll," "Banana Pepper Crunch Roll," and "Hot Pepper Crunch Roll."