Fantasia Distribution, Inc. v. Myle Vape Inc. et al

Filing 105

ORDER granting 102 Motion for Summary Judgment. For the reasons stated in the attached Memorandum and Order, Defendants' motion for summary judgment is granted. The Clerk of Court is respectfully requested to enter judgment in favor of Defendants and close this case. Ordered by Judge Kiyo A. Matsumoto on 8/28/2024. (DR)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
-----------------------------------X
FANTASIA DISTRIBUTION, INC.,
Plaintiff,

MEMORANDUM & ORDER

- against -

No. 20-CV-02378(KAM)(CLP)

MYLE VAPE, INC., et al.,
Defendants.
-----------------------------------X
KIYO A. MATSUMOTO, United States District Judge:
On

May

28,

2020,

Plaintiff

Fantasia

Distribution,

Inc.

(“Fantasia” or “Plaintiff”), a California corporation that sells,
markets, and distributes e-cigarette, vaping, hookah, tobaccos,
and

smoking-related

products,

commenced

this

action

alleging

claims for federal and common law trademark infringement and unfair
competition, and other common law and state law claims based on
Fantasia’s “ICE” marks. The Complaint named six entities that
manufacture or distribute liquids for use in electronic cigarettes
and prefilled disposable e-cigarettes: Myle Vape, Inc. (“Myle
Vape”), Cool Clouds Distribution, Inc. (“Cool Clouds”), Access
Vapor,

LLC

(“Access

Vapor”),

Limitless

Trading

Co.,

LLC

(“Limitless Trading”), Pop Vapor Co., LLC (“Pop Vapor”), and Romeo
Vapors, Inc. (“Romeo Vapors,” and together with Myle Vape, Cool

Clouds,

Access

Vapor,

Limitless

Trading

and

Pop

Vapor,

the

“Original Defendants”). (ECF No. 1, Compl.)
On April 4, 2023, Fantasia and Defendant Myle Vape stipulated
to dismiss Myle Vape pursuant to Fed. R. Civ. P. 41(a)(1)(A)(ii).
(ECF No. 95.) On February 11, 2022, Magistrate Judge Pollak granted
a motion for Cool Clouds’ then-attorneys to withdraw. (ECF No.
71.) Judge Pollak ordered Cool Clouds to obtain new counsel by
March 28, 2022, and warned that “failure to retain counsel may
result in a default being entered against” Cool Clouds. (Id.) Cool
Clouds never obtained new counsel, and the Court’s February 11,
2022 order mailed to Cool Clouds was returned as undeliverable on
February 14, 2022. (See ECF No. 72.) Fantasia has not moved for
default against Cool Clouds.
The remaining Defendants—Access Vapor, Limitless Trading, Pop
Vapor, and Romeo Vapors (collectively, “Defendants”) manufacture
or

distribute

liquids

for

use

in

electronic

cigarettes

and

prefilled disposable e-cigarettes. The Defendants move this Court
for summary judgment on all remaining claims against Defendants
and on their counterclaims against Fantasia concerning Fantasia’s
two “ICE” Trademarks described below. Defendants seek summary
judgment:

(1)

dismissing

with

prejudice

Fantasia’s

Complaint

alleging claims of federal and common law trademark infringement;
federal and common law claims of unfair competition; various state
law claims of unfair and deceptive trade practices; and unfair
2

competition

under

New

York

Law,

and

(2)

on

Defendants’

counterclaims cancelling Fantasia’s U.S. Trademark Registration
Nos. 3,998,201 (the “‘201 Registration”) and 4,600,173 (the “‘173
Registration”) for the term “ICE” for tobacco products and for
tobacco

products

(collectively,

the

and

e-cigarette

liquid,

“ICE

Trademarks”).

(See

respectively
ECF

No.

102,

Defendants’ Motion, at 1 (“Defs. Mot.”).) In the event that this
Court

cancels

Fantasia’s

trademarks,

Defendants

further

seek

certification of an Order to the Director of the U.S. Patent and
Trademark Office cancelling the marks in accordance with 15 U.S.C.
§ 1119; and that the Court declare, adjudge, and decree that
Defendants’ past use of the words “ice” or “iced” has not infringed
on

the

legal

rights

of

Fantasia;

declare

that

this

is

an

“exceptional case” that warrants attorney’s fees against Fantasia;
and award Defendants such other and further equitable relief as
the Court may deem just and proper.
For the reasons below, the Court grants Defendants’ summary
judgment motion against Fantasia’s claims and grants Defendants’
summary judgment motion on its cancellation counterclaims.
Background
I. Factual Background
The following facts are taken from the parties’ Local Rule
56.1 statement, counter-statement, and reply, as well as from
documents cited in the parties’ Local Rule 56.1 statements. (See
3

ECF No. 102-2, Defendants’ Rule 56.1 Statement (“Defs. 56.1”); ECF
No. 103-6, Plaintiff’s Rule 56.1 Statement (“Pl. 56.1”); ECF No.
104-1, Defendants’ Rule 56.1 Statement Reply (“Defs. Reply.”))
Except as otherwise indicated, the facts below are undisputed. The
Court

summarizes

only

those

facts

relevant

and

material

to

adjudicate the instant motion.
Fantasia owns two trademarks for the term “ICE” registered
with the United States Patent and Trademark Office. (Pl. 56.1 ¶
21; ECF No. 103-7, Exhibit A; ECF No. 103-8, Exhibit B.)
First, Fantasia is the owner of "ICE" Trademark Registration
‘201 for the goods and services of “Hookah tobacco; Molasses
tobacco; Smoking tobacco; Tobacco” under International Class 34,
used in commerce since 2009. (Pl. 56.1 ¶¶ 21-22; ECF No. 103-7,
Exhibit A at 1.)1
Second, Fantasia is the owner of "ICE" Trademark Registration
‘173 for the goods and services of “‘Electronic hookah liquid (eliquid) consisting of flavorings in liquid form used to fill
electronic hookahs or electronic hookah cartridges; Vapor liquid
consisting of flavorings in liquid form used to fill electronic
cigarette vaporizers or vaporizing cigarette cartridges’ under
International Class 30 and ‘Hookah tobacco; Herbal molasses; Herbs
for smoking; Molasses tobacco; Smoking molasses; Shisha; Vapor

1

Unless otherwise noted, citations reference the ECF page numbers.

4

stones for electronic hookahs; Electronic hookahs; Cartomizers,
namely, combination electronic cigarette refill cartridges sold
empty and atomizers, sold as a component of electronic cigarettes’
under International Class 34,” also used in commerce since 2009.
(Pl. 56.1 ¶¶ 21, 23; ECF No. 103-8, Exhibit B at 1-2.)
Both of Fantasia's registered ICE Trademarks have achieved
the legal status of incontestable under 15 U.S.C § 1065. (Pl. 56.1
¶ 24; ECF No. 103-7, Exhibit A at 3; ECF No. 103-8, Exhibit B at
4.)
Today, at least 58 manufacturers, as well as Defendants, use
the term “ice” or “iced” on e-liquid and prefilled disposable ecigarette products. (Defs. 56.1 ¶ 1; ECF No. 102-5, Exhibit 1 to
the Hyland Declaration (“Defs. Ex. 1”); ECF No. 102-8, Exhibit 4
to Hyland Declaration (“Defs. Ex. 4”).) Fantasia does not dispute
that others in the industry use the term “ice” or “iced” on their
products but disputes that the terms are used to indicate a cooling
sensation. (Pl. 56.1 at 2.)2
II. Procedural Background
In

its

Complaint,

Fantasia

alleges

that

the

Original

Defendants infringed upon the ICE Trademarks, as well as United
States Trademark Registration No. 3,812,330 (the “PINK LEMONADE
Trademark”). (ECF No. 1, Compl. ¶¶ 16–22.) Alongside the instant

Fantasia’s 56.1 Statement does not use paragraphs consistently and is cited
to the ECF pages where applicable.
2

5

action,

Fantasia

filed

a

second

lawsuit3

against

multiple

manufacturers and distributors of e-cigarette products alleging
claims similar to the instant action.
Fantasia subsequently decided not to pursue enforcement of
the PINK LEMONADE Trademark against all Defendants and dismissed
those claims on August 19, 2022. (ECF Nos. 66, 87.) On September
18, 2023, counsel to Access Vapor, the only remaining defendant at
that point with a pending counterclaim to cancel the PINK LEMONADE
mark, notified the Court that it stipulated to the dismissal of
its counterclaim seeking cancellation of the PINK LEMONADE mark,
and that further, the USPTO had cancelled the PINK LEMONADE mark
on February 5, 2021, rendering any counterclaims seeking its
cancellation moot. (See ECF No. 97.)
In remaining part, Fantasia’s Complaint asserts, inter alia,
that Defendants’ use of “ice” and “iced” on certain products
violated Fantasia’s ICE Trademarks. Fantasia brings claims of
Federal Trademark Infringement under 15 U.S.C. § 1114; unfair
competition under 15 U.S.C. § 1125(a); state law claims of unfair
and deceptive trade practices; common law trademark infringement
and unfair competition; and unfair competition under New York law.
(ECF No. 1, Compl. at 8-24.)

The second case, Fantasia Distribution, Inc. v. Magellan Technology, Inc. et
al, Case No. 2020-cv-04340 (KAM) (VMS) (EDNY), is also before this Court.
3

6

Defendants

answered

and

asserted

counterclaims

to cancel

Fantasia’s ICE Trademarks based on genericness. (ECF No. 14,
Limitless Trading and Pop Vapor Answer and Counterclaim at 18-20
(counterclaim to cancel ICE Trademarks under 15 U.S.C. § 1119);
ECF No. 23, Access Vapor Answer and Counterclaim at 17-18 (same);
ECF No. 46, Romeo Vapors Answer and Counterclaim at 29-30 (same).)4
Prior to Defendants’ instant motion, the parties each filed
motions to preclude the others’ respective experts under Daubert
v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993). On September 20,
2023, this Court granted Fantasia's motion to exclude the testimony
and declaration of Defendants’ marketing expert, Amy Netherton,
but denied Fantasia's motion to exclude the testimony of Thomas
Maronick, Defendants’ expert on the consumer perception of “ICE,”
including Dr. Maronick’s corresponding survey and report; in turn,
the

Court

granted

Defendants'

motion

to

exclude

Plaintiff’s

proffered expert testimony and Declaration of Julie Trinth. See
Fantasia Distribution, Inc. v. Cool Clouds Distribution, Inc., 693
F.

Supp.

3d

335

(E.D.N.Y.

2023).

The

Court

found

moot

the

Defendants’ motion to exclude declarations of Yousef Nasereddin,
Ziad Meziab, and Sami Romman as Fantasia’s expert statements; the

Romeo Vapors also counterclaims to cancel Fantasia’s ICE Trademarks based on
fraud and lack of secondary meaning. (See ECF No. 46, Romeo Vapors Answer and
Counterclaim at 23, 30.) However, because Defendants’ memorandum in support of
summary judgment does not raise arguments on secondary meaning or fraud, the
Court does not address Romeo Vapors’ counterclaims to cancel based on secondary
meaning or fraud.
4

7

parties ultimately agreed that Nasereddin, Meziab, and Romman are
fact witnesses. (See id.)
On December 21, 2023, Defendants filed the instant motion for
summary judgment (1) to dismiss Fantasia’s Complaint against the
Defendants, and (2) on Defendants’ counterclaims against Fantasia.
Legal Standard
Summary judgment is proper “if the movant shows that there is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).
“A dispute is ‘genuine’ if a reasonable jury could return a verdict
for the non-moving party,” and “a fact is ‘material’ if it might
affect the outcome of the case under the governing law.” Minto v.
Molloy Univ., No. 16-CV-276 (KAM) (AYS), 2024 WL 436956, at *6
(E.D.N.Y. Feb. 6, 2024) (citing Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986)).
“‘[W]hen the moving party has carried its burden[,]...its
opponent

must

do

more

than

simply

show

that

there

is

some

metaphysical doubt as to the material facts[.]’” Khan v. Addy's
BBQ LLC, 419 F. Supp. 3d 538, 566 (E.D.N.Y. 2019) (quoting Scott
v. Harris, 550 U.S. 372, 380 (2007)). The non-moving party “must
offer ‘some hard evidence showing that its version of the events
is not wholly fanciful[.]’” Id. (quoting Miner v. Clinton County,
N.Y., 541 F.3d 464, 471 (2d Cir. 2008) (quotations and citation
omitted)).
8

Indeed, “when reasonable minds could not differ as to the
import of the proffered evidence, then summary judgment is proper.”
Horizon Mills Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 211
(S.D.N.Y. 2001) (citing Anderson, 477 U.S. at 250–52; Bryant v.
Maffucci, 923 F.2d 979, 982 (2d Cir. 1991)). In other words,
although “[a]ll ambiguities must be resolved in favor of the nonmoving party and all permissible inferences from the factual record
must be drawn in that party's favor,” Zalaski v. City of Bridgeport
Police Dep't, 613 F.3d 336, 340 (2d Cir. 2010), ultimately, where
“a rational trier of fact” cannot find for the non-moving based on
“the record taken as a whole,” there is no “genuine issue for
trial,” and summary judgment is appropriate, Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)
(internal quotation omitted).
Further, although determining a trademark’s genericness is
“generally one of fact,” Tiffany & Co. v. Costco Wholesale Corp.,
994 F. Supp. 2d 474, 482 (citing Bristol–Myers Squibb Co. v.
McNeil–P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir. 1992)), a court
may make such determinations on a motion for summary judgment, see
Lemme v. Nat'l Broad. Co., 472 F. Supp. 2d 433, 443 (E.D.N.Y. 2007)
(footnote

omitted)

(“[S]ummary

judgment

is

as

appropriate

in

trademark cases as any other where there are no material disputes
of fact.”); Horizon Mills Corp., 161 F. Supp. 2d at 211 (collecting
cases). Accordingly, a court may grant summary judgment if the
9

moving party demonstrates there is no genuine issue of material
fact as to genericness. See Universal Church, Inc. v. Universal
Life Church/ULC Monastery, No. 14-CV-5213 (NRB), 2017 WL 3669625,
at *5 (S.D.N.Y. Aug. 8, 2017), aff'd sub nom. Universal Church,
Inc. v. Toellner, 752 F. App'x 67 (2d Cir. 2018) (granting summary
judgment in part to cancel a mark based on genericness).
Discussion
At bottom, this case concerns the use of a trademarked term
that covers tobacco products and liquids for smoking products like
electronic cigarettes and vaping devices. Fantasia asserts that
Defendants violate its ICE Trademarks by using “ice” or “iced” on
their products. Defendants argue that Fantasia’s marks are generic
and should be cancelled and, regardless, Defendants’ use of “ice”
and “iced” is fair use.
I. Whether the ICE Trademarks are Generic
Defendants argue that Fantasia’s ICE Trademarks are generic.
This argument underpins both Defendants’ summary judgment motion
against

Fantasia’s

claims

and

Defendants'

cancellation

counterclaims. Accordingly, the Court first addresses whether the
ICE Trademarks are generic. See Solid 21, Inc. v. Richemont N.
Am., Inc., No. 19-CV-1262 (LGS), 2023 WL 3996530, at *3 (S.D.N.Y.
June 14, 2023) (first analyzing genericness on cross-motions for
summary judgment where plaintiff alleged, inter alia, trademark
infringement, and defendants counterclaimed to cancel plaintiff’s
10

mark based on genericness). For the reasons below, the Court finds
that “ice” and “iced” are generic.
A. Determining Whether a Mark is Generic
A

federal

trademark

presumption

that

descriptive,

is

the

registration

term

accorded

is

not

secondary

“constitutes

generic,
meaning

or,
by

a

strong

if

merely

the

relevant

public.” Horizon Mills Corp., 161 F. Supp. 2d at 214. When a
registered mark has been used continuously for five consecutive
years after registration, and is still in use in commerce, the
mark is “incontestable.” See 15 U.S.C. § 1065. An incontestable
mark “shall be conclusive evidence...of the registrant's exclusive
right to use the registered mark in commerce.” Tiffany & Co., 994
F. Supp. 2d at 480 (quoting Gruner + Jahr USA Pub. v. Meredith
Corp., 991 F.2d 1072, 1076 (2d Cir. 1993)); see also Park 'N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194-95 (1985)
(noting that incontestable status provides conclusive evidence of
a registrant's exclusive right to use the registered mark).
At the same time, “[g]eneric terms are not registrable, and
a registered mark may be canceled at any time on the grounds that
it has become generic.” Park 'N Fly, Inc., 469 U.S. at 194. Indeed,
the “assertion that a trademark is generic presents a defense,
even to an incontestable trademark, because generic terms cannot
be trademarked in the first place.” Fantasia Distribution, Inc.,
693 F. Supp. 3d at 351; see also, e.g., Park 'N Fly, Inc., 469
11

U.S. at 195 (noting that “[a]n incontestable mark that becomes
generic may be canceled at any time”). Though there is “difficulty
involved

in

precisely

defining

the

generic

and

descriptive

categories” because “[t]he lines of demarcation...are not always
bright,” “the distinction is critical because ‘if determined to be
generic, [a] term can never function as a mark or be given
trademark protection; but if determined to be descriptive, the
term can be given trademark protection upon proof of secondary
meaning,’ referring to consumers' recognition of the term and
association with a source.” Horizon Mills Corp., 161 F. Supp. 2d
at 212 (quoting Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 9 (2d Cir. 1976) and 2 McCarthy on Trademarks and
Unfair Competition § 12–20 at 12–53 (4th ed.1999)).
“[A] mark is generic if, in the mind of the purchasing public
it does not distinguish products on the basis of source but rather
refers to the type of product.” Courtenay Commc'ns Corp. v. Hall,
334 F.3d 210, 214 n.2 (2d Cir. 2003). Further, “[g]eneric terms
are not limited to nouns that directly name a product; instead,
they

may

also

be

adjectives

which

name

some

distinctive

characteristic of a genus of products.” Lemme, 472 F. Supp. 2d at
441 (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 12:10 at 12–24 (4th ed 2006)); see Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148-49 (2d Cir.
1997) (finding “Honey Brown Ale” a generic mark for a brown ale
12

brewed with honey); Miller Brewing Co. v. G. Heileman Brewing Co.,
561 F.2d 75, 80-81 (7th Cir. 1977) (finding the word “‘light,’
including its phonetic equivalent ‘lite,’” was “a generic or common
descriptive term as applied to beer” and noting that “[t]he fact
that ‘light’ is an adjective does not prevent it from being a
generic or common descriptive word”).
At its core, a generic mark “answers the question ‘What are
you?’ while a valid trademark answers ‘Who are you?’” Universal
Church, Inc., No. 14-CV-5213 (NRB), 2017 WL 3669625, at *5 (citing
2 McCarthy on Trademarks and Unfair Competition § 12:1 (4th ed.)).
A generic term “is a common name...that describes a kind of
product.” Meredith Corp., 991 F.2d at 1075.
Title 15 U.S.C. § 1064 (3) provides in relevant part, “[t]he
primary significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for determining
whether the registered mark has become the generic name of goods
or services on or in connection with which it has been used.”
Ultimately, “the ‘primary significance test’ is the law of the
land[.]” Genesee Brewing Co., 124 F.3d at 144 (citing Kellogg Co.
v. National Biscuit Co., 305 U.S. 111, 118 (1938)). “In order to
become generic the principal significance of the word must be its
indication of the nature or class of an article, rather than an
indication of its origin.” Id. (quoting King-Seeley Thermos Co. v.

13

Aladdin Indus., Inc., 321 F.2d 577, 580 (2d Cir. 1963) (citation
and internal quotation marks omitted)) (emphasis in original).
B. Demonstrating that a Mark is Generic
In

determining

"a

mark's

understanding

in

the

consuming

public, the Second Circuit has articulated a non-exhaustive list
of competent sources that can be considered, ‘including consumer
surveys, testimony of consumers or trade professionals, dictionary
definitions, uncontested usage of the mark by competitors to
describe their products, generic usage in newspaper and magazine
articles, and generic usage by the proponent of the trademark.’”
FragranceNet.com, Inc. v. Les Parfums, Inc., 672 F. Supp. 2d 328,
333 (E.D.N.Y. 2009); see also Pilates, Inc. v. Current Concepts,
Inc., 120 F. Supp. 2d 286, 297 (S.D.N.Y. 2000) (reviewing similar
evidence after a bench trial to determine plaintiff’s marks were
generic); Horizon Mills Corp., 161 F. Supp. 2d at 214 (reviewing
similar evidence on summary judgment); Frito-Lay, Inc. v. Bachman
Co., 704 F. Supp. 432, 440 (S.D.N.Y. 1989) (same). No specific
type of evidence is required to show a mark is generic; however,
“it is unlikely that any [type of evidence], standing alone, will
constitute conclusive proof that the contested mark has been
appropriated by the public.” Horizon Mills Corp., 161 F. Supp. 2d
at 214.
Further, “[i]n addition to these factors, it is necessary to
determine whether there are commonly used alternative means to
14

describe the product or service.” Pilates, Inc., 120 F. Supp. 2d
at 297 (citing Genesee Brewing Co., 124 F.3d at 144).
C. Evidence as to Whether “Ice” is Generic
Here,

Defendants

produced

undisputed

evidence

of

other

competing manufacturers’ uncontested uses of “ice” and “iced”;
Defendants’ own uses of “ice” and “iced”; uses of “ice” in news
articles and online; and a consumer survey and corresponding expert
report analyzing the survey. Further, the record does not indicate
there are commonly used alternatives to “ice” or “iced.” Finally,
Fantasia’s proffered evidence fails to create any genuine dispute
of material fact as to whether “ice” is generic as to tobacco
products

and

liquids

for

smoking

products

like

electronic

cigarettes and vaping devices.
1. Industry Uses of “Ice” and “Iced”
“Generic use of a term by a trademark holder's competitors
weighs in favor of genericness.” Pilates, Inc., Inc., 120 F. Supp.
2d at 297–98. Here, Defendants produced images of fifty-eight nonparty

manufacturers

of

e-liquids

and

prefilled

disposable

e-

cigarettes, in addition to the Defendants, that use the word “ice”
or “iced” on their products “to describe flavors that create a
cooling sensation.” (Defs. 56.1 ¶ 1; Defs. Ex. 1.)5 Defendants also

As explained, infra, Fantasia mistakenly argues in passing that “Hyland
Exhibits 1, 2 and 3 are unreliable hearsay which were rejected as hearsay
material when relied upon by Defendants’ excluded expert Ms. Netherton.” (ECF
No. 103, Pl. Mem. at 3 (citing to internal pagination).) Defendants’ Hyland
Exhibit 1 shows “[p]ictures of third-party products bearing ‘ice’ or ‘iced’
5

15

produced images showing how Defendants themselves use the word
“ice” to “signify a particular flavor has a cooling effect.” (Defs.
56.1 ¶ 5; Defs. Ex. 4.)
Though Fantasia disputes that the images in Exhibit 1 show
competitor

manufacturers

using

"ice"

or

"iced"

to

“describe

flavors that create a cooling sensation,” it does not dispute the
images’ veracity, nor does it cite to any admissible evidence to
create a genuine dispute with Defendants’ showing that “ice”
describes a cooling sensation. (Pl. 56.1 at 2.) In turn, Fantasia
does not appear to dispute that Defendants use “ice” to “signify
that a particular flavor has a cooling effect.” (Id. at 4-5.)
Instead, Fantasia responds in a circular and conclusory manner
that Fantasia itself uses “ICE” as a trademark and reiterates that
the marks are incontestable. (Id.) “In order to become generic the
principal significance of the word must be its indication of the
nature or class of an article, rather than an indication of its
origin.” FragranceNet.com, Inc., 672 F. Supp. 2d at 333 (quoting
King-Seeley Thermos Co., 321 F.2d at 580).

marks and table summarizing images” from manufacturers of e-liquids and
prefilled disposable e-cigarettes; Hyland Exhibit 2 shows “[s]creenshots from
Reddit where users discussed ‘ice’ products and authentication of same”; and
Hyland Exhibit 3 shows “[n]ews articles referring to ‘ice’ as a generic term”
to describe e-juices. (ECF No. 102-4, Hyland Declaration at 2-3; Defs. 56.1 ¶¶
1, 3-4). The Court addresses the hearsay arguments as to Exhibits 2 and 3 below.
As to Exhibit 1, to the extent Fantasia argues that the images are inadmissible,
the Court disagrees for the same reasons noted at pages 24-25 regarding the
Reddit posts. Indeed, Fantasia cites no rule of evidence, case law, or other
justification to argue that images in Exhibit 1 of third-party products offered
to illustrate the use of the words “ice” or “iced,” and a table summarizing
those images, are inadmissible hearsay.

16

Here, Defendants’ Exhibits 1 and 4 show images, respectively,
of product packaging from the fifty-eight non-party, competing
manufacturers of e-liquids and prefilled disposable e-cigarettes
that use the word “ice” or “iced”, and images of Defendants’
products, which use “ice” or “iced,” but not as an “indication of
its origin” or source, but rather as an “indication of the nature
or

class

products.

of”

the

non-party

FragranceNet.com,

manufacturers’

Inc.,

672

F.

and

Supp.

Defendants’
2d

at

333.

Defendants’ Exhibit 1 and Exhibit 4 show that the fifty-eight
manufacturers

and

Defendants

themselves

use

“ice”

or

“iced”

generically to indicate product flavors with a cooling sensation,
and not as a source identifier. (Defs. 56.1 ¶¶ 1, 5; Defs. Ex. 1
& 4). For example, the images in Defendants’ Exhibits 1 and 4 show
“ice” used in conjunction with or adjacent to flavor descriptions
(e.g., “Banana Ice,” “Mango Ice”). Moreover, the word “ice” in
Defendants’ Exhibits 1 and 4 is also generally featured less
prominently in smaller typeface than the larger typeface for the
competitors’ and Defendants’ own brand names. (See, e.g., Exhibit
1 at 6; Exhibit 4 at 17); see Cosmetically Sealed Indus. v.
Chesebrough-Pond’s

USA

Co.,

125

F.3d

28,

30

(2d

Cir.

1997)

(analyzing fair use and noting that the “non-trademark use of the
challenged phrase...[was] evidenced by the fact that the source of
the defendants' product is clearly identified by the prominent
display of the defendants' own trademarks”).
17

Further,

a

competitor’s

generic use

of a mark

that

the

trademark holder has not challenged “strongly supports a finding
of genericness.” Pilates, Inc., 120 F. Supp. 2d at 297-98. It is
undisputed that Fantasia did not enforce its ICE Trademarks prior
to 2018, as Fantasia admits that, though it registered the ICE
Trademarks in 2011 and 2014, it was “unaware of any use of the
term ‘ICE’ by any other companies until late 2018.” (ECF No. 103,
Pl. Mem. at 2.)6
2. Consumer Survey Data
“Consumer surveys are routinely admitted in trademark cases
to show genericness of a mark.” Pilates, Inc., 120 F. Supp. 2d at
302 (citing Schering Corp. v. Pfizer, Inc., 189 F.3d 218, 225 (2d
Cir. 1999)); see also Horizon Mills Corp., 161 F. Supp. 2d at 212–
13 (finding that “on summary judgment, a consumer survey would be
particularly helpful in divining what the principal significance
of [the term at issue] is to the consuming public”).
Here, Defendants offer results of a consumer survey conducted
by Dr. Maronick and a corresponding report analyzing the results.
(Defs. 56.1 ¶ 2; ECF No. 102-3, Exhibit A (the “Maronick Survey
and Report”).) Fantasia disputes Dr. Maronick’s conclusions but
without offering or citing to any admissible evidence. (See Pl.
56.1 at 2-3.) Further, in its Daubert decision, this Court has

6

Citing to internal pagination.

18

already discussed the admissibility of the Maronick Survey and
Report and denied Fantasia’s motion to exclude them. See Fantasia
Distribution, Inc., 693 F. Supp. at 352 (“[T]he Court finds that
the Maronick Survey is both admissible under FRE 803(3) and FRE
702, and that the analysis within the Maronick Report is supported
by sufficient data insofar as the analysis is based on the results
of the Maronick Survey.”).
The

survey

specifically

targeted

respondents

in

the

e-

cigarette and vaping devices markets. (Maronick Survey and Report
at 3.) In turn, the report analyzes the survey results to determine
whether responding consumers believed the word “ice” or “iced” on
a product in the relevant market identifies “a particular company,
organization, or brand.” (Id.) The Maronick Survey and Report
showed that 82% of respondents believed that “ice” is a common
word and not a brand name and that 87% of respondents believe the
word “iced” is a common word and not a brand name. (Id. at 5-6.)
These results are strong evidence of a mark’s genericness. See
King-Seeley Thermos Co., 321 F.2d at 579-80 (finding “thermos” had
entered the public domain in part where “about 75% of adults in
the United States who were familiar with containers that keep the
contents

hot

or

FragranceNet.com,

cold,
Inc.,

call
672

such
F.

a

container

Supp.

2d

a

at

‘thermos’”);
337

(“[T]he

determination of whether a product's mark is generic involves a

19

determination of ‘how the purchasing public for the particular
good perceives the mark.’” (emphasis in original)).
Here,
majority

of

the

report

respondents

specifically
in

the

concludes

target

market

“that
for

the

vast

electronic

cigarettes or vaping devices (i.e., 82.0%) believe ‘Ice’ is a
common word and not a brand name,” and that an “even higher
percentage (87.0%), believe ‘Iced’ is a common word and not a brand
name.” (Maronick Survey and Report at 8.) “Therefore, consumers in
the target market for electronic cigarettes or other vaping devices
[who] see the words ‘Ice’ or ‘Iced,’...on a vaping product in the
marketplace would be unlikely to believe either word/phrase is
identifying a particular company or organization.” (Id.)
Fantasia’s response to the Maronick Survey and Report—albeit
without citing to admissible evidence—is that Defendants fail to
show that “ice” is a generic term as to a smoking product, and
instead Defendants only show that the general public understands
“ice” to be a common word, namely, for frozen water. Specifically,
Fantasia argues that the “study fails to address [that] the sole
issue in this case[] is [whether] the term ICE [is] generic for
products in the vaping industry.” (See ECF No. 103, Pl. Mem. at 6,
9.)7

7

Citing to internal pagination.

20

This Court, again, is unpersuaded by Fantasia’s unsupported
argument, which Fantasia raised in its Daubert motion and which
this Court rejected. See Fantasia Distribution, Inc., 693 F. Supp.
3d at 353. This Court again finds, as it did previously, that
Fantasia’s “assertion that the Maronick Survey and Maronick Report
serve only to prove that ‘the majority of English speakers would
agree that “ice” is a common word’ to refer to ‘frozen water’
discounts the fact that (1) the population of survey participants
was limited to members of the relevant consumer group, and that
(2) respondents were prompted to draw explicit comparisons between
the relevant terms as ‘common words’ and as ‘brand names.’” Id. at
348-49.
This Court further noted, again, that “the Maronick Survey
purports to do more than demonstrate that the relevant terms are
common in the abstract-the survey asks respondents, e-cigarette
and vaping-product consumers, whether they associate the relevant
terms with a brand or whether they think [of] the relevant terms
as common, descriptive words-in other words, whether the survey
respondents view the relevant terms as generic.” Id. at 351-52
(further noting that “the assertion that a trademark is a common
and

descriptive,

and,

therefore,

generic

term,

if

true,

is

applicable grounds for cancellation of a registered trademark,
even one registered under 15 U.S.C. § 1115” and reiterating that
“the Maronick Report and the Maronick Survey are clearly relevant
21

to the question of whether the ICE Trademarks are generic and
therefore

cancellable,

which

is

the

subject

of

Defendants’

counterclaims and a core issue in the instant action”).
Further,

relying

on

Defendants’

survey

by

Dr.

Maronick,

Fantasia argues that because 14.5% of survey respondents associate
“ice” with an unidentified brand name, and 7.5% associate “iced”
with an unidentified brand name, a genuine dispute of material
fact exists. Even drawing all permissible and favorable inferences
from the factual record in Fantasia’s favor, Fantasia’s argument
is unavailing, because the Second Circuit has found that, as in
the Defendants’ Maronick Survey, where the “great majority of those
members of the public who use the word” are “not aware of any
trademark significance” and the mark lacks an association with a
brand

or

source,

the

mark

is

generic

and

not

entitled

to

protection. King-Seeley Thermos Co., 321 F.2d at 579, 581 (finding
“thermos” entered public domain in part where “about 75% of adults
in the United States who were familiar with containers that keep
the contents hot or cold, call such a container a ‘thermos’”).
Here,

the

Maronick

Survey

finds

that

82%

and

87%

of

respondents, respectively, do not associate the terms “ice” and
“iced” with a brand, and that the “ice” and “iced” terms are not
an

indication

of

Fantasia

itself

to

those

respondents.

See

Courtenay Commc'ns Corp., 334 F.3d at 214 n.2 (“[A] mark is generic
if, in the mind of the purchasing public it does not distinguish
22

products on the basis of source but rather refers to the type of
product.”).
3. Internet Forum Posts
Defendants produced online Reddit forum posts from 2021 where
users discuss e-cigarette and vaping products using the word “ice.”
(Defs.

56.1

¶

3;

ECF

No.

102-6,

Exhibit

2

to

the

Hyland

Declaration, (the “Reddit Posts”).) Fantasia does not dispute the
existence of the posts but disputes that the posts are admissible
because they were “rejected as hearsay material when relied upon
by Defendants’ excluded expert Ms. Netherton” and that “[a]s stated
by

the

Court,

a

review

of

internet

forums

is

not

reliable

evidence.” (Pl. 56.1 at 3-4; ECF No. 103, Pl. Mem. at 3.)8 Fantasia
further disputes – as above, without citing to any admissible
evidence - that the Reddit Posts demonstrate generic uses of the
word “ice.” (Pl. 56.1 at 3-4.)
As

to

the

admissibility

of

the

Reddit

Posts,

Fantasia

misunderstands this Court’s prior Daubert opinion. Although this
Court’s

Daubert

opinion

addressed

statements

from

an

online

messaging board from 2013 (which are distinct from the 2021 Reddit
posts proffered here) in Exhibit 1 of the Netherton Declaration,
the

Court

held

that

the

“core

deficiency

in

Netherton’s

interpretation of the statements contained in the online messaging

8

Citing to internal pagination.

23

board

sampled

in

Exhibit

1

is

that

neither

[Netherton]

nor

Defendants provide support for the use of such statements as
evidence of the market-level observations she presents.” Fantasia
Distribution, Inc., 693 F. Supp. at 354-55. Although this Court
determined that “online messaging forums sampled in Exhibit 1 are
not the product of rigorous processes and methodology employed in
obtaining survey evidence, and therefore do not warrant the same
treatment as survey evidence,” the Court did not find inadmissible
the online messaging board statements based on the rule against
hearsay. Id. at 355. Indeed, this Court specifically noted that
“[t]he parties’ discussion of the hearsay rule as it relates to
the comments on the 2013 online messaging board reflected in
Exhibit 1 to the Netherton Declaration misapprehends the main
issue,” that the online messaging board did not support Netherton’s
market-level observations. Id. at 354.
Further, if materials “are not being introduced for a hearsay
purpose, i.e., ‘to prove the truth of the matter[s] asserted,’
Fed. R. Evid. 801(c). . .then they are not hearsay, and no such
exception is needed.” Rivera v. Inc. Vill. of Farmingdale, 29 F.
Supp. 3d 121, 128–29 (E.D.N.Y. 2013). Here, the Reddit Posts are
not offered by Defendants for the truth of any matter asserted in
the statements; instead, they show how consumers use the term “ice”
when discussing smoking product flavors. See RVC Floor Decor, Ltd.
v. Floor & Decor Outlets of Am., Inc., No. 18-CV-6449 (JS) (ARL),
24

2023 WL 2403258, at *9 (E.D.N.Y. Mar. 7, 2023) (“[I]f the Instagram
Post is offered for the limited purpose of demonstrating general
confusion on the part of customers, the customer complaint would
not be hearsay since it is not being offered for the truth of the
matter asserted.”).
Even if the Reddit Posts were hearsay, they may still be
admissible under Federal Rule of Evidence 803(3) as a “statement
of the declarant's then-existing state of mind” as to the use of
“ice” and certain variations. Fed. R. Evid. 803(3); see also FunDamental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 1003–04
(2d Cir. 1997) (finding “no hearsay problem” where the “testimony
in question was not offered to prove that [plaintiff] was actually
selling to some retailers at lower prices, but was probative of
the declarant's confusion,” and “[f]urther, [that] Federal Rule of
Evidence 803(3) allows statements, otherwise excluded as hearsay,
to be received to show the declarant's then-existing state of
mind”); RVC Floor Decor, Ltd., No. 18-CV-6449 (JS) (ARL), 2023 WL
2403258, at *9 (noting that although “the Instagram Post is offered
for the limited purpose of demonstrating general confusion on the
part of customers” and thus “the customer complaint would not be
hearsay since it is not being offered for the truth of the matter
asserted,” “a customer complaint may also be admissible under Rule
803(3) as a statement showing the declarant's then-existing state
of mind”); GoSMiLE, Inc. v. Dr. Jonathan Levine, D.M.D. P.C., 769
25

F. Supp. 2d 630, 647 (S.D.N.Y. 2011) (“The online product reviews
are admissible non-hearsay only for the fact that the online
comments were made, and they are not considered for [] the truth
of their contents....The online reviews have some probative value
as to consumer perceptions of the products' quality.”).
Here, the Reddit Posts show consumers discussing the word
“ice” to reference a type or category of product, when combined
with a flavor, for which there are further subsets. (See, e.g.,
Reddit Posts at 7 (“When I use a Hyppe bar with a fruit/ice flavor,
it's so cool and refreshing....I've tried buying ice flavors from
Coastal Clouds and Red’s now but neither gives that real ice
blast[.]”).) This evidence indicates a mark’s genericness. See
Khan, 419 F. Supp. 3d at 567 (noting a generic term “‘refers, or
has come to be understood as referring, to the genus of which the
particular product is a species’” (quoting Abercrombie & Fitch
Co., 537 F.2d at 9); Courtenay Commc'ns Corp., 334 F.3d at 214 n.2
(“Essentially, a mark is generic if, in the mind of the purchasing
public it does not distinguish products on the basis of source but
rather refers to the type of product.”).
4. News Articles
Defendants produced news articles using “ice” in the context
of “e-juices” used with e-cigarettes and vaping products. (Defs.
56.1 ¶ 4; ECF No. 102-7, Exhibit 3 to the Hyland Declaration,
(“Defs. Ex. 3”).) Specifically, Defendants produced web versions
26

of articles from, for example, the Columbus Dispatch, the Honolulu
Star, NPR, the San Francisco Chronicle, the Wall Street Journal,
and the Winston-Salem Journal. (Defs. Ex. 3.) Fantasia does not
dispute the existence of the news articles. (Pl. 56.1 at 4.)
Fantasia does dispute – again, without citing to any admissible
evidence - that the news articles demonstrate generic uses of
“ice.” (Id.) Fantasia also states that Defendants’ Exhibit 3 is
not admissible evidence for the conclusion of genericness. (Id.)
As to admissibility, to the extent Fantasia argues that the news
articles are inadmissible, the Court disagrees for the same reasons
noted, supra, regarding the Reddit posts.
Further, “newspaper and magazine use of a term in a generic
sense is strong evidence of genericness.” Pilates, Inc., 120 F.
Supp. 2d at 300 (citing Harley–Davidson, Inc. v. Grottanelli, 164
F.3d 806, 811 (2d Cir. 1999)). Here, the news articles demonstrate
generic uses of “ice” to note a type of e-cigarette and vaping
product with flavors and categories of flavors generally (see,
e.g., Defs. Ex. 3 at 25 (article asking, “Fancy a mango, watermelon
or lemon-Ice flavored vape? You are in luck. They are being sold
online by Puff Bar, a brand that last year was ordered to take its
e-cigarettes off the U.S. market”)), or at times noting specific
flavors in a non-source-identifying manner (see, e.g., id. at 5
(article noting that “[w]ith candy-flavored products like ‘Mango
Ice,’ ‘Milkshake’ and ‘Blueberry Muffin,’ tobacco companies have
27

hooked our children on nicotine”)).9 In turn, although Fantasia is
correct that “examples of newspaper and magazine use of” a phrase
are “not proof positive” of its genericness, Murphy Door Bed Co.
v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989),
such evidence is, nonetheless, “a strong indication of the general
public's perception,” id. Here, the news articles use “ice” in a
non-source-identifying

manner.

Fantasia

offers

no

admissible

evidence otherwise. (See Pl. 56.1 at 4.)
5. Commonly Used Alternative
Finally, the record does not indicate that “there are commonly
used

alternative

means

to

describe

the

product

or

service,”

Pilates, Inc., 120 F. Supp. 2d at 297, though neither party
explicitly argues whether there are commonly used alternatives.
Here, the similar use of “ice” and its variations by nearly five
dozen different competitors depicted in Exhibit 1 to the Hyland
Declaration denoting the same thing — e-liquid and prefilled
disposable e-cigarette products with flavors imparting a cooling

Defendants also offer three articles regarding the term “ice” in the context
of smoking products that were published in the last year from the websites of
the National Institutes of Health and the Federal Drug Administration, noting
that these articles were published after Defendants’ initial Statement of
Material Facts was submitted. (See ECF No. 102-1, Defendants’ Memorandum, at 19
n.5 (citing to internal pagination).) Defendants argue that the articles are
subject to judicial notice, citing Brooklyn Heights Ass'n, Inc. v. Nat'l Park
Serv., 777 F. Supp. 2d 424, 432 (E.D.N.Y. 2011). However, the Brooklyn Heights
case is not persuasive; it only briefly mentions that although “a court
reviewing an agency action is generally limited to the administrative record,
the Court may take judicial notice of the BBP website, which is a government
publication.” Id. at 432 n.6. Here, this Court is not reviewing an agency
action. However, because the Court finds that “ice” is generic, it need not
decide whether to take judicial notice of the government articles.
9

28

sensation, rather than as a source-identifying mark — demonstrates
the lack of a commonly used alternative.
Further, even if an alternative means of description exists,
no reasonable juror based on the record could find that such
alternative was common. See Genesee Brewing Co., 124 F.3d at 148
(noting

that

the

mere

“availability

of

alternative

means

of

describing the product does not automatically preclude a finding
that a trademark is generic”). Indeed, in Pilates, the plaintiff
argued

that

there

were

“many

other

names

to

describe

body

conditioning exercise instruction services that are similar to but
distinct from PILATES,” but the court found that did “not undercut
the credible and voluminous testimony that there is no other way
that

is

commonly

understood

to

describe

Pilates

exercises.”

Pilates, Inc., 120 F. Supp. 2d at 298–99.
6. Fantasia Presents Insufficient Evidence to Create Any Genuine
Issue of Material Fact as to Genericness of “Ice”
In

turn,

Fantasia

produced

(1)

a

copy

of

a

settlement

agreement; (2) images of its own products and their use of the
term “ICE”; (3) three declarations from individual wholesalers and
retailers; and (4) copies of its registrations. (See ECF No. 1031,

Confidential

Settlement

Agreement;

ECF

No.

103-2,

Product

Images; ECF No. 103-3, Personal Declaration of Ziad Meziab (“Meziab
Declaration”); ECF No. 103-4, Personal Declaration of Sami Romman
(“Romman Declaration”); ECF No. 103-5, Personal Declaration of

29

Yousef

Nasereddin

(“Nasereddin

Declaration”);

ECF

No.

103-7,

Exhibit A, ‘201 Registration; ECF No. 103-8, Exhibit B, ‘173
Registration).)

The

Court

finds

irrelevant

to

the

issue

of

genericness Fantasia’s settlement agreement. See generally Fed. R.
Evid.

408.

Further,

Fantasia’s

own

product

images

are

not

responsive to Defendants’ genericness arguments.
As to Fantasia’s registrations, as noted above, Fantasia
improperly grounds its argument in the conclusive presumption of
validity

of

its

incontestable

marks,

ignoring

that

“[a]n

incontestable mark that becomes generic may be canceled at any
time.” Park 'N Fly, Inc., 469 U.S. at 194-95.
As to the declarations, all three are from presidents of
wholesalers of, inter alia, vaping- and tobacco-related products.
(See

Meziab

Declaration;

Romman

Declaration;

and

Nasereddin

Declaration.) The three declarations - nearly identical to each
other – each state that the declarants associate the ICE Trademarks
with Fantasia’s products; that it was “unclear” to each declarant
whether other brands using “ice” had products sponsored or licensed
by Fantasia; and that each of the declarants had witnessed one or
more instances of customer confusion by the use of “ice” by
companies other than Fantasia. (See id.)
The three personal declarations are insufficient to create a
genuine issue of material fact. See Matsushita Elec. Indus. Co.,
Ltd., 475 U.S. at 587. First, to the extent the three declarations
30

state the views of the wholesalers themselves, the declarations
are not probative of the “primary significance” of the term “ice”
to the “buying public,” which is the “test for genericness,”
Horizon Mills Corp., 161 F. Supp. 2d at 212–13, because the three
declarations are from three presidents of wholesalers of vapingand tobacco-related products who are industry professionals and
“not representative of the typical consumer.” LVL XIII Brands,
Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 672
(S.D.N.Y. 2016), aff'd sub nom. LVL XIII Brands, Inc. v. Louis
Vuitton Malletier SA, 720 F. App'x 24 (2d Cir. 2017) (finding that
anecdotal

evidence

inquiries

by

of

fashion

actual
industry

confusion

where

professionals

and

most
“had

involved
a

pre-

established personal or business relationship with” plaintiff were
not representative of the typical consumer).
Second, even though the three personal declarations generally
reference witnessing consumer confusion from other companies using
“ice,”

the

declarations,

without

more,

are

insufficient

to

establish a genuine issue of material fact as to genericness, even
reading the declarations in the light most favorable to Fantasia.
Fantasia did not produce a single consumer survey, or anything
else

besides

the

three

personal

professionals, to demonstrate

the

declarations

of

industry

“‘primary significance’”

of

“ice” “to the buying public[.]” Horizon Mills Corp., 161 F. Supp.
2d at 212, 220 (finding that “on summary judgment, a consumer
31

survey would be particularly helpful in divining what the principal
significance of [the term at issue] is to the consuming public”);
see Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F.
Supp. 2d 340, 370 (E.D.N.Y. 2007) (finding, in a summary judgment
analysis

for

secondary

meaning,

that

“unlike

a

survey

of

disinterested consumers, affidavits from a handful of individuals
doing business with one of the parties pose issues of objectivity;
understandably, courts have concluded that ‘testimony from persons
closely associated with the plaintiff does not adequately reflect
the views of the buying public’”); c.f. Frito-Lay, Inc., 704 F.
Supp. at 440 (denying summary judgment on defendant’s counterclaim
seeking cancellation of plaintiff’s mark based on genericness
when, inter alia, defendant “offered no proof of widespread, as
distinguished from fairly scattered, consumer use of ‘ruffles’ as
a

generic

term

for

food

in

general

or

for

potato

chips

in

particular, even though the mark has been in use for potato chips
for over thirty years” and there was “no evidence of widespread
industry use”).
Judge
Church,

Buchwald’s

Inc.

v.

summary

Universal

judgment
Life

decision

Church/ULC

in

Universal

Monastery

is

instructive. There, plaintiff brought, inter alia, a trademark
infringement action in connection with its registration of various
marks, including ‘Universal Church’ and ‘The Universal Church,’”
where some marks were incontestable, and where Defendant moved for
32

summary judgment seeking cancellation of the marks. Universal
Church, Inc., No. 14-CV-5213 (NRB), 2017 WL 3669625 at *1.
Judge Buchwald found that “universal” is generic as applied
to the churches. Defendants presented evidence that “universal”
was understood to refer to the entire Christian Church or all
Christians collectively; that “numerous churches use ‘universal’
and ‘universal church’ in their name”; and that “‘universal’ is
used in the name of the denomination, Unitarian Universalism...
while ‘universal's’ etymological counterpart, ‘catholic,’ is used
in the name of the largest Christian denomination, the Roman
Catholic Church.” Id. at *7-8. In contrast, plaintiff produced a
photograph of one of its churches and a newsletter and testimony
from its own employees, to which the court determined that “‘little
probative

value’

attache[d]...because

‘[t]rademark

law

is

skeptical of the ability of an associate of a trademark holder to
transcend personal biases to give an impartial account of the value
of the holder's mark.’” Id. at *8-9.
On balance, Judge Buchwald found “little evidence that the
relevant public understands ‘Universal Church’ as referring to
plaintiff, despite the fact that the USPTO registered the mark as
having achieved secondary meaning and subsequently granted it
incontestable status.” Id. at *8. Specifically, the court noted:
[E]ven if we were to accept plaintiff's claim that
plaintiff uses the “Universal Church” mark in
connection with its physical churches and broadcasts,
33

it does little to show how the mark is understood by
the vast majority of the “relevant public” who do not
belong to plaintiff's church. With respect to those
individuals, the only evidence in plaintiff's favor
appears to be two articles referring to plaintiff as
the “Universal Church.” See Zibas Decl. (ECF No. 91),
Ex. EE (N.Y. Post article); Daniels Decl. (ECF No.
123), Ex. 23 (N.Y. Times article). Thus, we find that
there is virtually no evidence in the record that
anyone in the relevant public, outside plaintiff's own
members, understands “Universal Church” as referring
to plaintiff.
Id. at *9 (footnote omitted). “Based on this record,” Judge
Buchwald held that “the primary significance of ‘universal church’
to the relevant public is a type of church rather than plaintiff,
namely one that considers itself to be universal in the sense of
representing the entire Christian church.”
The same analysis applies here. The primary significance of
the term “ice” to the relevant public is a genus of flavors for
tobacco and smoking products like electronic cigarette and vaping
devices, rather than Fantasia itself. See Genesee Brewing Co., 124
F.3d at 144, 148-49 (finding “Honey Brown Ale” a generic mark for
a brown ale brewed with honey); Khan, 419 F. Supp. 3d at 567
(noting that a generic term “refers, or has come to be understood
as referring, to the genus of which the particular product is a
species” (quoting Abercrombie & Fitch Co., 537 F.2d at 9)).
Ultimately, Fantasia presents no evidentiary facts creating
a genuine dispute as to whether “ice” or “iced” are generic to
tobacco products and liquids for smoking products like electronic

34

cigarettes and vaping devices, and thus no reasonable jury could
find for Fantasia. See Matsushita Elec. Indus. Co., Ltd., 475 U.S.
at 587.
II. Defendants’ Counterclaims to Cancel the Incontestable Marks
A. Incontestable Marks Can Be Cancelled if Generic
“An incontestable mark that becomes generic may be canceled
at any time pursuant to” 15 U.S.C. § 1064. Park 'N Fly, Inc., 469
U.S. at 195.
In opposition to Defendants’ motion,

Fantasia

mistakenly

argues that an incontestable mark cannot be cancelled because being
a “common word” is not a specific defense in 15 U.S.C. § 1115(b).
(See ECF No. 103, Pl. Mot. at 4.) Fantasia ignores 15 U.S.C. §
1064, “Cancellation of registration,” which states in relevant
part that a “petition to cancel a registration of a mark, stating
the grounds relied upon, may...be filed as follows...(3) At any
time if the registered mark becomes the generic name for the goods
or services, or a portion thereof, for which it is registered[.]”
15 U.S.C. § 1064(3); see also Tiffany & Co., 994 F. Supp. 2d at
480 (noting even a statutorily incontestable mark can become
“invalid and cancelled if it has come to be ‘the generic name for
the goods or services, or a portion thereof, for which it is
registered’”) (quoting 15 U.S.C. § 1064(3))).
B. Cancellation of ICE Trademarks

35

“In

any

action

involving

a

registered

mark

the

court

may...order the cancelation of registrations, in whole or in
part[.]” 15 U.S.C. § 1119; see also Khan, 419 F. Supp. 3d at 567
(“[A] federal court may cancel the registration of a federally
registered trademark” (internal quotation omitted)); Horizon Mills
Corp., 161 F. Supp. 2d at 214 (“[U]nder 15 U.S.C. § 1119, this
Court may also direct the PTO to cancel a mark”).
Fantasia’s ‘201 Registration covers “ICE” in the context of
the

following

goods

and

services:

“Hookah

tobacco;

Molasses

tobacco; Smoking tobacco; Tobacco” under International Class 34.
(Pl.

56.1

¶

22;

ECF

No.

103-7,

Exhibit

A).

Fantasia’s

‘173

Registration covers “ICE” in the context of the following goods
and services: “‘Electronic hookah liquid (e-liquid) consisting of
flavorings in liquid form used to fill electronic hookahs or
electronic
flavorings

hookah
in

cartridges;

liquid

form

used

Vapor
to

liquid

fill

consisting

electronic

of

cigarette

vaporizers or vaporizing cigarette cartridges’ under International
Class 30 and ‘Hookah tobacco; Herbal molasses; Herbs for smoking;
Molasses

tobacco;

electronic

Smoking

hookahs;

molasses;

Electronic

Shisha;

hookahs;

Vapor

stones

Cartomizers,

for

namely,

combination electronic cigarette refill cartridges sold empty and
atomizers, sold as a component of electronic cigarettes’ under
International Class 34.” (Pl. 56.1 ¶ 23; ECF No. 103-8, Exhibit
B.)
36

Because this Court finds that “ice” is generic as to the goods
and services described in the ‘201 and ‘173 Registrations, it
grants

Defendants’

cancellation

of

motion

Fantasia’s

for
ICE

summary

Trademarks,

judgment
including

seeking
but

not

limited to the extent they cover tobacco for smoking and liquids
used in hookah, electronic cigarette, and vaping products and
orders the cancellation of Fantasia’s ‘201 and ‘173 Registrations
pursuant to 15 U.S.C. § 1119.
III. Fantasia’s Claims
For

the

reasons

below,

summary

judgment

is

granted

on

Fantasia’s remaining claims against Defendants.
A. Infringement and Unfair Competition Claims
Fantasia brings federal trademark infringement claims under
15 U.S.C. § 1114, Section 32 of the Lanham Act, as well as claims
of unfair competition under 15 U.S.C. § 1125(a), Section 43(a) of
the Lanham Act. Fantasia brings its federal infringement claims
under both the ‘201 Registration and the ‘173 Registration.
To

prevail

on

a

claim

under

§

1114,

“a

plaintiff

must

demonstrate: (1) ‘that it has a valid mark entitled to protection,’
and (2) ‘that the defendant's use of that mark is likely to cause
confusion.’” Van Praagh v. Gratton, 993 F. Supp. 2d 293, 301
(E.D.N.Y. 2014). The same is required to prevail under § 1125(a).
See Est. of Ellington ex rel. Ellington v. Harbrew Imports Ltd.,
812 F. Supp. 2d 186, 192 (E.D.N.Y. 2011) (“A party establishes
37

liability

under

demonstrate

‘(1)

Section
that

43(a)

it

of

has

a

the
valid

Lanham

Act

trademark

if

it

can

entitled

to

protection under the Act, and (2) defendant's actions are “likely
to cause confusion.”’”). Indeed, the “standards governing claims
for unfair competition, under Section 43(a) of the Lanham Act, and
for trademark infringement, under Section 32, are substantially
the same” and “[b]oth claims are governed by a ‘familiar two-prong
test’...‘which looks first to whether the plaintiff's mark is
entitled to protection, and second to whether defendant's use of
the mark is likely to cause consumers confusion as to the origin
or sponsorship of the defendant's goods.’” Jackpocket, Inc. v.
Lottomatrix NY LLC, 645 F. Supp. 3d 185, 228 (S.D.N.Y. 2022),
aff'd, No. 23-12-CV, 2024 WL 1152520 (2d Cir. Mar. 18, 2024)
(internal quotation omitted).
Because there is no genuine dispute that “ice” is generic as
to

tobacco

electronic

products

and

cigarettes

liquids

and

vaping

for

smoking

devices,

products

and

like

because

the

“assertion that a trademark is generic presents a defense, even to
an

incontestable

trademark,

because

generic

terms

cannot

be

trademarked in the first place,” Fantasia Distribution, Inc., 693
F. Supp. 3d at 351, summary judgment is proper as to Fantasia’s
Lanham Act claims under §§ 1114 and 1125(a). Both of Fantasia’s
Lanham

Act

claims,

relying

on

Fantasia’s

two

ICE

Trademarks

covering tobacco and electronic cigarette and vaping products,
38

require a mark entitled to protection, but “[a] generic term is a
common name” and “[a] common name, available to anyone, is never
entitled to trademark protection.” Meredith Corp., 991 F.2d at
1075.
Fantasia

also

brings

a

claim

of

“Common

Law

Trademark

Infringement and Unfair Competition,” and a claim of “Unfair
Competition Under New York Law.” (ECF No. 1, Compl., Counts 12 and
13, ¶¶ 86–95.) To the extent Fantasia alleges infringement and
unfair competition of a common law trademark, summary judgment is
also granted for the same reasons as above: that “[a] generic
mark...receives no trademark protection.” Time, Inc. v. Petersen
Pub. Co. L.L.C., 173 F.3d 113, 118 (2d Cir. 1999).
Further, Count XII is virtually identical to Count XIII, which
alleges unfair competition under New York law. “Courts employ
substantially
trademark

similar

infringement

standards
under

the

when

analyzing

Lanham

Act,

claims
15

U.S.C.

for
§

1114(1)(a); false designation of origin under the Lanham Act, 15
U.S.C. § 1125(a); trademark infringement under New York common
law; and unfair competition under New York common law.” Van Praagh,
993 F. Supp. 2d at 301 (noting that a “federal claim of false
designation of origin” is “also referred to as a claim for unfair
competition” under § 1125(a)); see also Now-Casting Econ., Ltd. v.
Econ. Alchemy LLC, 628 F. Supp. 3d 501, 516–17 (S.D.N.Y. 2022),
reconsideration denied, No. 18-CV-2442 (JPC), 2023 WL 3724155
39

(S.D.N.Y. May 30, 2023), aff'd, No. 23-947, 2024 WL 2720235 (2d
Cir. May 28, 2024) (noting that the “legal standards” for common
law trademark infringement and unfair competition under New York
law “are ‘virtually identical’ to the standards for trademark
infringement and unfair competition under the Lanham Act, except
that New York common law claims ‘require an additional showing of
bad faith’”).
Here, not only has Fantasia presented no evidence of “bad
faith,” but simply put, “[a] party that fails to prevail on its
Lanham Act claims thus cannot prevail on New York common law claims
for infringement and unfair competition.” Now-Casting Econ., Ltd.,
628 F. Supp. at 517; see also Universal Church, Inc., 2017 WL
3669625, at *16 (after finding plaintiff’s trademark to be generic,
dismissing New York common law unfair competition and trademark
infringement

claims

without

analysis

in

part

because

“the

standards...are essentially the same as under the Lanham Act”).
1. Fair Use
Even if Fantasia did have valid, non-generic marks, summary
judgment is still warranted on Fantasia’s claims under the Lanham
Act and common law claims of infringement and unfair competition
based on the defense of fair use. Section 33(b)(4) of the Lanham
Act defines fair use by an alleged infringer as “a use, otherwise
than as a mark,...of a term or device which is descriptive of and
used fairly and in good faith only to describe the goods or
40

services of [a] party.”

15 U.S.C. § 1115(b)(4); see Dessert

Beauty, Inc. v. Fox, 568 F. Supp. 2d 416, 423 (S.D.N.Y. 2008),
aff'd, 329 F. App'x 333 (2d Cir. 2009) (“Even if a party's conduct
would otherwise constitute infringement of another's trademark,
fair use provides an absolute defense to liability.”).
To prevail on a fair use defense, the Defendants must show:
“‘that the use was made (1) other than as a mark, (2) in a
descriptive sense, and (3) in good faith.’” VOX Amplification Ltd.
v. Meussdorffer, 50 F. Supp. 3d 355, 375 (E.D.N.Y. 2014) (quoting
Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013); Wonder
Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 1067
(S.D.N.Y.

1990)

(noting

that

“[t]he

standard

for

unfair

competition under New York law is very similar to the standards of
the Lanham Act....Thus, the defense that the defendant's use of
the mark is purely descriptive and not as a trademark equally
precludes recovery for common law unfair competition.” (citing
American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 662
(2d Cir.1979)).
As discussed above, Hyland Declaration Exhibit 4 demonstrates
that Defendants use “ice” and “iced” “other than as a mark.” (Defs.
Ex. 4.) Fantasia offers no evidence to the contrary. Defendants’
use of the terms “other than as a mark” is “evidenced by the fact
that the source of the defendants' product is clearly identified
by the prominent display of the defendants' own trademarks.”
41

Cosmetically Sealed Indus., 125 F.3d at 30. Further, Defendants
use the “ice” and “iced” terms in a “descriptive sense,” which
“includes more than just ‘words that describe a characteristic of
the goods, such as size or quality’” but also “covers a ‘tendency’
to describe goods ‘in a broad sense, including...words or images
that more abstractly identify some information about the goods in
question.’” Solid 21, Inc., 96 F.4th at 276. Here, Defendants use
“ice” and “iced” to note a category of product flavors that provide
a sense of a cooling effect.
Finally,

courts

equate

the

good

faith

prong

“with

‘the

subsequent user's intent to trade on the good will of the trademark
holder by creating confusion as to source or sponsorship.’” Solid
21, Inc., 96 F.4th at 278. Further, “[t]hough a showing of good
faith is its own requirement under the statute, there is some
overlap

between

fair

use's

three

prongs;

evidence

that

the

defendant used the term descriptively and not as a mark might also
demonstrate that the defendant acted in good faith.” Id. at 279.
Here, Defendants used the term “ice” descriptively, as noted above.
The undisputed record shows that Defendants used “ice” and “iced”
in good faith, and there is no evidence that Defendants intended
to trade on Fantasia’s good will by creating confusion as to the
source of their products.
Accordingly, summary judgment is granted on Fantasia’s claims
of

federal

trademark

infringement
42

and

unfair

competition

and

common law trademark infringement and unfair competition. See Van
Praagh, 993 F. Supp. 2d at 301; Wonder Labs, Inc. v. Procter &
Gamble Co., 728 F. Supp. at 1067.
B. Claim of Unfair and Deceptive Trade Practice
Fantasia also alleges a claim of Unfair and Deceptive Trade
Practices in Count XI of its Complaint in violation of “statues of
several

states,”

including

California,

Colorado,

Delaware,

Georgia, Hawaii, Illinois, Maine, Minnesota, Nebraska, New Mexico,
New York, Ohio, and Oklahoma. (ECF No. 1, Compl. at 22.)
On the whole, these thirteen states’ statutes require, inter
alia,

alleged

conduct

that

is

deceptive,

unfair,

misleading,

fraudulent, or likely to cause confusion or to deceive the public.
Further, for some, an analysis under the Lanham Act would be
dispositive. See, e.g., Crossfit, Inc. v. Quinnie, 232 F. Supp. 3d
1295, 1310 (N.D. Ga. 2017) (“The federal Lanham Act analysis
governs

the

analysis

of

CrossFit's

state

law

trademark

claims...for deceptive trade practices in violation of Georgia's
Uniform Deceptive Trade Practices Act under O.C.G.A. §§ 10–1–370
to

10–1–375.”).

For

other

states,

the

statute

requires

some

allegations that unfair acts took place in the specific state. See
BCBSM, Inc. v. Walgreen Co., 512 F. Supp. 3d 837, 856 (N.D. Ill.
2021) (finding plaintiffs’ claims under the “Illinois Consumer
Fraud

and

Deceptive

Business

43

Practices

Act...fail

because

Plaintiffs have not pleaded [that] any of the unfair acts took
place primarily and substantially in Illinois”).
Fantasia’s
without

more,

three
to

personal

create

a

declarations

genuine

dispute

are
of

insufficient,
material

fact

regarding whether there is a likelihood of confusion. Further,
Fantasia offers no evidence of deceptive, unfair, misleading, or
fraudulent conduct by Defendants at all, much less in the states
alleged. As discussed extensively above, no evidence exists in the
record from which a jury could infer that Defendants failed to act
in

good

faith.

Accordingly,

summary

judgment

is

granted

on

Fantasia’s claim of Unfair and Deceptive Trade Practices under the
state laws alleged.
IV. Exceptional Cases Warranting Attorneys’ Fees
Though they offer no facts and make no arguments to support
it,

Defendants

ask

this

Court

to

declare

this

matter

an

“exceptional case” that warrants attorney’s fees against Fantasia.
(ECF No. 102, Defs. Mot. at 1-2.) The failure to offer any evidence
or proffer any argument “as to why this case should be considered
to be exceptional” “is a sufficient ground upon which to deny the
fees request[.]” Lighting & Supplies, Inc. v. New Sunshine Energy
Sols. Inc., No. 20-CV-2790 (FB) (VMS), 2023 WL 2815623, at *8
(E.D.N.Y. Mar. 14, 2023), report and recommendation adopted, No.
20-CV-2790 (FB) (VMS), 2023 WL 2674376 (E.D.N.Y. Mar. 29, 2023).
Even if Defendants had proffered arguments, the Court finds that
44

this case is not exceptional and denies Defendants’ request for
attorneys’ fees.
Under the Lanham Act, a court “in exceptional cases may award
reasonable attorney fees to the prevailing party.” Sleepy's LLC v.
Select Comfort Wholesale Corp., 612 F. Supp. 3d 115, 132 (E.D.N.Y.
2020) (quoting 15 U.S.C. § 1117(a)). “Courts in the Second Circuit
generally determine cases to be exceptional under the Octane
Fitness standard when litigants have acted unreasonably or in bad
faith.” Id. at 133 (quoting Travel Leaders Grp., LLC v. Corley,
No. 19-CV-1595, 2019 WL 6647319, at *14 n.7 (S.D.N.Y. Dec. 5,
2019). Employing a “‘case-by-case exercise,’ courts may consider
factors

including

‘frivolousness,

motivation,

objective

unreasonableness (both in the factual and legal components of the
case)

and

the

considerations

need
of

in

particular

compensation

and

circumstances

to

advance

deterrence.’”

Lighting

&

Supplies, Inc., No. 20-CV-2790 (FB) (VMS), 2023 WL 2815623, at *6
(quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572
U.S. 545, 554 & n.4 (2014) and 4 Pillar Dynasty LLC v. New York &
Company, Inc., 933 F.3d 202, 215 (2d Cir. 2019)).
There is no indication that Fantasia acted unreasonably, or
in bad faith. Nothing suggests, and Defendants do not offer,
evidence

that

Plaintiff

unreasonableness,

ill

acted

motive,

with
or

45

frivolousness,

anything

else

to

objective
justify

compensation. Accordingly, this Court finds that this matter is
not an exceptional case warranting an award of attorneys’ fees.
Conclusion
For the reasons stated above, Defendants’ motion for summary
judgment is granted as to Fantasia’s remaining claims against
Defendants.
cancellation

Defendants’
of

motion

Fantasia’s

for

U.S.

summary

Trademark

judgment

seeking

Registration

Nos.

3,998,201 and 4,600,173 and an order to cancel the ICE Trademarks’
registrations pursuant to 15 U.S.C. § 1119 is granted. The Clerk
is

respectfully

ordered

to

enter

judgment

in

favor

of

all

Defendants and close this case.
SO ORDERED.
Dated:

August 28, 2024
Brooklyn, New York
_______________________________
KIYO A. MATSUMOTO
United States District Judge
Eastern District of New York

46