Shandong Shinho Food Indus. Co. v. May Flower Int'l, Inc.

Decision Date25 February 2021
Docket Number19-CV-1621 (MKB)
Citation521 F.Supp.3d 222
CourtU.S. District Court — Eastern District of New York
Parties SHANDONG SHINHO FOOD INDUSTRIES CO., LTD., Plaintiff, v. MAY FLOWER INTERNATIONAL, INC., GB Green Gastronome, LLC, and Xiaobo Yao, Defendants.

Brian Douglas Siff, Evangelos Michailidis, Gregory Paul Gulia, Duane Morris LLP, New York, NY, Gilbert A. Greene, Pro Hac Vice, John Bradford Thompson, Duane Morris LLP, Jun Zheng, Pro Hac Vice, Duane Morris, Austin, TX, Christiane Campbell, Pro Hac Vice, Victoria R. Danta, Duane Morris LLP, Philadelphia, PA, for Plaintiff.

Brian Michael Gargano, Nguyen & Chen, Houston, TX, Ge Li, Kevin K. Tung, Yijie Song, Kevin Kerveng Tung, P.C., Flushing, NY, for Defendant May Flower International, Inc.

Kevin K. Tung, Kevin Kerveng Tung P.C., Flushing, NY, for Defendants Xiaobo Yao, GB Green Gastronome, LLC.

MEMORANDUM & ORDER

MARGO K. BRODIE, United States District Judge:

Plaintiff Shandong Shinho Food Industries Co., Ltd. ("Shandong Shinho") commenced the above-captioned action against Defendant May Flower International, Inc. ("May Flower") on July 18, 2018. (Compl., Docket Entry No. 1.) Plaintiff subsequently amended its pleadings twice, ultimately asserting claims of (1) trademark counterfeiting in violation of section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), (2) trademark infringement in violation of section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) and the New York common law, (3) trade dress infringement in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and the New York common law, (4) false designation of origin in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (5) unfair competition under the New York common law, (6) dilution and injury to business reputation under section 360-l of New York General Business Law ("NYGBL"), and (7) deceptive trade practices under section 349 of the NYGBL against Defendants May Flower, GB Green Gastronome ("GB Green"), and Xiaobo Yao. (Am. Compl., Docket Entry No. 37; Second Am. Compl. ("SAC") ¶¶ 40–72, Docket Entry No. 78.)

Defendants move to dismiss the SAC pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure.1 (Defs.’ Mot. to Dismiss ("Defs.’ Mot."), Docket Entry No. 89; Defs.’ Mem. in Supp. of Defs.’ Mot. ("Defs.’ Mem."), Docket Entry No. 89-1.) For the reasons set forth below, the Court grants Defendants’ motion in part and denies it in part.

I. Background

The Court assumes the truth of the factual allegations in the SAC for the purposes of this Memorandum and Order.

a. Plaintiff's trademark and trade dress

Plaintiff Shandong Shinho is a "leading supplier of specialty Chinese foods, such as bean curd and soybean paste." (SAC ¶ 11.) Plaintiff is a limited liability company organized under the laws of the People's Republic of China and has its principal place of business in Longwangzhuang Town, Laiyang, Shandong Province, China. (Id. ¶ 2.) Plaintiff has "continuously marketed, distributed[,] and sold its soybean paste products in U.S. interstate commerce" since December of 2008. (Id. ¶ 11.) Plaintiff adopted and is using the design mark of "," which transliterates to "CONG BAN LÜ" or "CONG BAN LV" and translates to "Companion of Scallion" (the "CONG BAN LV Mark"). (Id.) The CONG BAN LV Mark consists of the following elements:

(a) the Chinese characters: " " (Cong), " " (Ban) and " " (Lv); (b) a curved line (or a shape that is similar to a curved line) that intersects a rectangular background design; (c) a flower comprising red, orange, yellow and green petal colors; (d) a flower with five petals that intersects a rectangular background design; (e) a rectangular background design with curved edges at the top and bottom; (f) the green color for the rectangular background design; and (g) a white outline of the perimeter of the rectangular background.

(Id. ¶ 12.) The CONG BAN LV Mark is pictured below:

(Id. ¶ 11.) On March 29, 2011, Plaintiff's founder, Teh-San Sun, applied to register the CONG BAN LV Mark with the U.S. Patent and Trademark Office (the "USPTO"), and on February 14, 2012, the mark was registered under Registration No. 4,098,259. (Id. ¶ 13.) Plaintiff states that the mark is "incontestable by operation of law" and covers "food seasonings; sauces; [and] soy bean paste" in International Class 30. (Id. ) On July 5, 2018, a Declaration of Use and/or Excusable Nonuse under section 8 of the Lanham Act was filed. (Id. ) On June 27, 2019, Plaintiff recorded with the USPTO a nunc pro tunc assignment of the CONG BAN LV Mark to Plaintiff with an effective date of July 17, 2018 (the "Assignment"). (Id. ¶ 14; Trademark Assignment Cover Sheet ("Trademark Assignment") 1, annexed to Pl.’s Opp'n to Defs.’ Mot. ("Pl.’s Opp'n") as Ex. A, Docket Entry No. 90-2.)2

Plaintiff produces, markets, and sells its CONG BAN LV soybean paste products in connection with its "well-known and distinctive" CONG BAN LV trade dress (the "CONG BAN LV Trade Dress") consisting of:

(a) the green color of the tub container; (b) the yellow color of the container cap; (c) the yellow color stripe across the bottom portion of the front panel of the product label; (d) the predominantly green landscape image, which appears above the yellow color stripe on the front panel of the product label; and (e) the square shaped tub container ....

(Id. ¶ 15.) The CONG BAN LV Trade Dress is pictured below:

(Id. ) Plaintiff states that the CONG BAN LV Trade Dress "serves to readily distinguish Shandong Shinho's CONG BAN LV products from those of its competitors." (Id. ¶ 16.) Plaintiff has "continuously used the CONG BAN LV [Mark] and the CONG BAN LV Trade Dress since their first use in U.S. commerce." (Id. ¶ 17.) Plaintiff features its soybean paste products sold under the CONG BAN LV Mark and encased in the CONG BAN LV Trade Dress in "advertising and in other materials" including "on its website ..., in catalogs, in print advertisements, in presentations[,] and in other marketing materials." (Id. ) Plaintiff also "offers, markets, distributes[,] and sells its soybean paste products under the CONG BAN LV [Mark] and encased in the CONG BAN LV Trade Dress in over 800 supermarkets across the United States," including in both Chinese supermarkets and "mainstream supermarkets, such as Kroger." (Id. ¶ 18.) Plaintiff's soybean paste products sold under the CONG BAN LV Mark and CONG BAN LV Trade Dress are "currently available and sold to many consumers in many countries throughout the world, including in 209,859 retail stores in China." (Id. )

Plaintiff states that its sales of the CONG BAN LV soybean paste products "have been tremendous and Shandong Shinho is recognized as an established and reputable business in the market of sauce and soybean paste products." (Id. ) The CONG BAN LV Mark and CONG BAN LV Trade Dress are "known by the consuming public as identifying and distinguishing [Plaintiff's] soybean paste products from those of its competitors." (Id. )

b. Defendants’ logos and products

Plaintiff alleges that "at some point during the relationship between [Plaintiff] and May Flower, May Flower surreptitiously developed its own logos and packaging identical or substantially indistinguishable from the CONG BAN LV [Mark] and the CONG BAN LV Trade Dress for its own soybean paste products." (Id. ¶ 19.) May Flower has two versions of its logos that both consist of the Chinese characters "," which transliterate to "Cong Ban Jiang" and translate to "Scallion Mixing With Bean Sauce." (Id. ) One design contains a small flower (the "Small Flower CONG BAN JIANG Logo") as depicted below:

(Id. ) The other design contains a big flower (the "Big Flower CONG BAN JIANG Logo") as depicted below:

(Id. ) May Flower "produces, markets, offers[,] and sells its soybean paste products in connection with product packaging" that Plaintiff alleges is "confusingly similar" to the CONG BAN LV Trade Dress. (Id. ¶ 20.) May Flower's trade dress (the "CONG BAN JIANG Trade Dress") is described as:

(a) the green color of the tub container; (b) the yellow color of the container cap; (c) the yellow color stripe across the bottom portion of the front panel of the product label; (d) the predominantly green landscape image which appears above the yellow color stripe on the front panel of the product label; and (e) the square shaped tub container ....

(Id. ) May Flower's Small Flower Trade Dress is pictured below:

(Id. ) May Flower's Big Flower Trade Dress is pictured below:

(Id. ) Plaintiff also alleges that May Flower's sealing film displays a similar logo (the "Sealing Film Logo") that consists of the Chinese characters "," which transliterate to "Cai Ban Jiang" and translate to "Bean Sauce for Vegetables," and is depicted below:

(Id. ¶ 21.)

May Flower's soybean paste products feature the Small Flower and Big Flower CONG BAN JIANG Logos, Small Flower and Big Flower CONG BAN JIANG Trade Dress, and the Sealing Film Logo on its packaging and "in marketing materials for those products." (Id. ¶ 22.) May Flower markets and sells its products through third-party grocery stores, retailers, and online, "including in some of the exact same stores that [Plaintiff] offers and sells its CONG BAN LV soybean paste products." (Id. ; see also Photo of Soybean Paste Products at Store, annexed to SAC as Ex. B, Docket Entry No. 78-2.)3 Plaintiff asserts that May Flower's products are "directly competitive with the soybean paste products offered and sold" by Plaintiff and are "substantially indistinguishable from and confusingly similar to" Plaintiff's CONG BAN LV Mark and Trade Dress. (Id. ¶ 23.)

Prior to filing the SAC, Plaintiff "retained a survey expert who surveyed over 800 respondents who shop in Chinese grocery stores in order to measure the likelihood of confusion between" Plaintiff's products containing the CONG BAN LV Mark and May Flower's products containing the Small Flower and Big Flower CONG BAN JIANG Logos. (Id. ¶ 25.) Plaintiff's survey "revealed that [eighty percent] of survey respondents were...

To continue reading

Request your trial
11 cases
  • LPD N.Y., LLC v. Adidas Am., Inc.
    • United States
    • U.S. District Court — Eastern District of New York
    • September 24, 2022
    ... ... aware.” ABM Indus. Groups, LLC v. Int'l Union ... of ... v. Hart's Food ... Stores, Inc ., 267 F.2d 358, 367 (2d ... marks omitted); see, e.g. , Shandong Shinho Food ... Indus. Co. v. May Flower ... ...
  • Vans, Inc. v. MSCHF Prod. Studio, Inc.
    • United States
    • U.S. District Court — Eastern District of New York
    • April 29, 2022
    ...inherently distinctive or has acquired secondary meaning in the marketplace." Shandong Shinho Food Indus. Co., Ltd. v. May Flower Int'l, Inc. , 521 F. Supp. 3d 222, 253 (E.D.N.Y. 2021) (Brodie, C.J.) (quoting Nora Beverages, Inc. v. Perrier Group of Am., Inc. , 269 F.3d 114, 118 (2d Cir. 20......
  • Now-Casting Econ. v. Econ. Alchemy
    • United States
    • U.S. District Court — Southern District of New York
    • September 15, 2022
    ... ... Cont'l Airlines, Inc., 970 F.Supp. 246, 248-49 ... (S.D.N.Y ... (S.D.N.Y. 2015); Gelmart Indus., Inc. v. Eveready Battery ... Co. , 120 ... ordinary trademark infringement.” Shandong Shinho ... Food Indus. Co. v. May Flower ... ...
  • Guru Teg Holding, Inc. v. Maharaja Farmers Mkt., Inc.
    • United States
    • U.S. District Court — Eastern District of New York
    • August 2, 2021
    ...equivalents, 2 McCarthy on Trademarks and Unfair Competition § 12:41 (5th ed.) ; see also Shandong Shinho Food Indus. Co. v. May Flower Int'l, Inc. , 521 F. Supp. 3d 222, 250 n.12 (E.D.N.Y. 2021).Defendants argue maharaja is a common term in Indian culture, meaning prince. DE 24-4 at 6. Sim......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT