Conopco Inc. v. Wells Enterprises Inc.

Filing 49

MEMORANDUM AND ORDER. For the aforementioned reasons, Unilever's motion to dismiss is denied with respect to Wells's Lanham Act false advertising claim, granted with respect to Wells's New York General Business Law claims, and granted without prejudice with respect to Wells's federal trademark infringement and common law unfair competition claims. This Memorandum and Order resolves docket number 34. Granting in part and denying in part 34 Motion to Dismiss. (Signed by Judge Naomi Reice Buchwald on 5/13/2015) (rjm)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------X
CONOPCO INC. d/b/a UNILEVER,
Plaintiff,
- against -

MEMORANDUM AND ORDER

WELLS ENTERPRISES, INC.,

14 Civ. 2223 (NRB)

Defendant.
---------------------------------------X
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE

Plaintiff Conopco Inc. d/b/a Unilever (“Unilever”) brings
this action against defendant Wells Enterprises, Inc. (“Wells”)
for trademark infringement and related state and federal claims.
Presently before the Court is Unilever’s motion to dismiss Wells’s
counterclaims for false advertising, trademark infringement, and
related state law claims.

For the reasons stated herein, this

motion is granted in part and denied in part.
BACKGROUND
Wells is “the largest privately held, family-owned ice cream
and frozen treat manufacturer in the United States.”
Complaint ¶ 8.

Counter-

Founded in 1913, Wells is famous for producing ice

cream under signature brands such as “Blue Bunny” and “2nd Street
Creamery, as well as for the product at issue in this litigation,
Wells’s “Bomb Pop.”

Id.

The Bomb Pop was the “first red-white-

and-blue rocket shaped frozen ice pop sold in the United States,”1
created by James S. Merritt and D.S. Abernethy of Merritt Foods in
1955.

Id. ¶¶ 9-10.

Wells acquired Merritt Foods in the early

1990s and has continuously marketed, distributed, and sold Bomb
Pops since acquiring the brand.

Id. ¶¶ 10, 15.

Notably, Wells

has consistently marketed the Bomb Pop as “the original Bomb Pop,”
setting

out

packaging.2

the

phrase

“the

See id. ¶ 15.

original”

prominently

on

its

It currently holds nine trademark

registrations for the name and elements of the design of the Bomb
Pop.

Id. ¶¶ 11-13.
Unilever also sells a rocket ice pop under the brand name

“Firecracker.”
Bomb

Pop

in

appearance,”

Id. ¶ 18.
its

design,

The Firecracker strongly resembles the
similarly

featuring

“red-above-white-above-blue

“symmetrical, radially projecting fins.”

color

a

“rocket-like
scheme,”

Id. ¶ 19.

and

Unilever

introduced the Firecracker “nearly 30 years after the advent of
the Bomb Pop.”

Id. ¶ 20.

1

For purposes of concision, the category of “red-white-and-blue rocket shaped
frozen ice pops” will be referred to as “rocket ice pops.”

2

For example, since 2006, the Bomb Pop package has featured these designs:

2

On March 28, 2014, Unilever filed a complaint against Wells
for federal trademark infringement, false designation of origin
and unfair competition in violation of the Lanham Act, and unfair
competition, deceptive trade practices, and injury to business
reputation under New York state law.

In its pleadings, Unilever

argues that the packaging of Wells’s “Bomb Pop” is confusingly
similar to the trade dress for Unilever’s “Firecracker” products.
On

May

22,

2014,

Wells

filed

an

answer

and

asserted

counterclaims against Unilever for false advertising, trademark
infringement, and related state law claims.

First, Wells alleges

that

Firecracker

Unilever

packaging

to

has

“recently

prominently

altered

feature

the

its

phrase

‘The

product

Original,’

knowing that the Bomb Pop was the first red-white-and-blue rocket
shaped frozen ice treat,” and has therefore engaged in false
advertising under the Lanham Act.

Id. ¶ 24.

Wells also asserts

claims for false advertising and deceptive trade practices with
respect to Unilever’s use of the term “original” under New York
law.

Finally, while denying infringement, Wells asserts that if

a likelihood of confusion does exist between the two products, it
does

so

as

a

“result

of

trademarked Bomb Pop design.

Unilever’s

infringement

of

Wells’

In other words, if consumers are

likely to believe that Wells’ Bomb Pop product comes from the same
source as Unilever’s Firecracker--which they are not--this belief
would be caused by Unilever’s adoption of a product configuration
3

for its Firecracker product that is nearly identical to Wells’
trademarked Bomb Pop design.”
On

December

3,

2014,

Id. ¶ 22.
Unilever

moved

to

dismiss

Wells’s

counterclaims for failure to state a claim under Rule 12(b)(6).3
This motion was fully briefed on February 2, 2015.

DISCUSSION
I.

Motion to Dismiss
A. Legal Standard
“[C]ounterclaims must meet the pleading requirements of Rule

8(a), as interpreted by Twombly and Iqbal, in order to survive a
motion to dismiss pursuant to Federal Rule of Civil Procedure
12(b)(6).”

Erickson Beamon Ltd. v. CMG Worldwide, Inc., 12 Civ.

5105 (NRB), 2014 WL 3950897, at *2 (S.D.N.Y. Aug. 13, 2014); see
also Orientview Techs. LLC v. Seven for All Mankind, LLC, 13 Civ.
0538 (PAE), 2013 WL 4016302, at *3 (S.D.N.Y. Aug. 7, 2013) (“A
motion to dismiss a counterclaim is evaluated under the same
standard as a motion to dismiss a complaint.”).
defendant’s

counterclaims,

we

accept

as

In considering a

true

all

factual

allegations in the pleadings and draw all reasonable inferences in
the non-moving party's favor.

Harris v. Mills, 572 F.3d 66, 71

(2d Cir. 2009); Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d

3

Unilever previously filed a motion to dismiss Wells’s counterclaims on June
12, 2014. That motion was denied without prejudice on December 4, 2014,
following Unilever’s filing of the current superseding motion to dismiss.

4

229, 237 (2d Cir. 2007).

Nevertheless, the counterclaimant's

“[f]actual allegations must be enough to raise a right of relief
above the speculative level.”

Bell Atl. Corp. v. Twombly, 550

U.S. 544, 555 (2007); see also Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009).

If the counterclaimant has “not nudged [its] claims

across the line from conceivable to plausible,” the counterclaim
must be dismissed.

Twombly, 550 U.S. at 570.

standard applies to “all civil actions.”

This pleading

Iqbal, 556 U.S. at 684

(internal quotation marks omitted).
B. False Advertising Under the Lanham Act
To succeed on a false advertising claim under Section 43(a)
of the Lanham Act, a plaintiff “must prove the following elements:
(1) the defendant has made a false or misleading statement; (2)
the false or misleading statement has actually deceived or has the
capacity to deceive a substantial portion of the intended audience;
(3) the deception is material, in that it is likely to influence
purchasing

decisions;

(4)

the

defendant

placed

the

false

or

misleading statement in interstate commerce; and (5) the plaintiff
has been injured as a result of the misrepresentation, either by
direct diversion of sales or by a lessening of goodwill associated
with its products.” Merck Eprova AG v. Gnosis S.p.A., 901 F. Supp.
2d 436, 449-50 (S.D.N.Y. 2012), aff'd, 760 F.3d 247 (2d Cir. 2014)
(citing S.C. Johnson & Son, Inc. v. Clorox Co., 241 F.3d 232, 238
(2d Cir. 2001)).
5

i. The Firecracker’s Packaging
At issue in this dispute is the packaging of Unilever’s
Firecracker, specifically its use of the phrase “the original
Firecracker.”

As seen in the picture below, the phrase “the

ORIGINAL FIRECRACKER” can be found on the Firecracker package
partially covering a drawing of three rocket ice pops on a bright
yellow background.

The text of this phrase slants upward, with

each word in the phrase drawn larger than the last.

The word “the”

is written in blue minuscule letters without a border, the word
“original” is written in blue majuscule letters with a shadowed
white

border,

and

the

word

“Firecracker”

is

written

majuscule letters with a blue-shadowed white border.

in

red

The “I” in

Firecracker has been replaced with a drawing of a red-and-white
firecracker topped with a blue-and-white star for a dot; aside
from this letter, both “original” and “Firecracker” are drawn in
extra-bold sans-serif fonts, although the fonts are not identical.

6

ii. Falsity
First, “a claim under the Lanham Act for false advertising
requires allegations that: ‘(1) the advertisement is literally
false . . . , or (2) although the advertisement is literally true,
it is likely to deceive or confuse consumers.”

Societe Des Hotels

Meridien v. LaSalle Hotel Operating P'ship, L.P., 380 F.3d 126,
132 (2d Cir. 2004) (quoting Lipton v. Nature Co., 71 F.3d 464, 474
(2d Cir. 1995)).

A statement will be deemed literally false if it

is false on its face, or if it unambiguously implies a falsehood.
See Time Warner Cable, Inc. v. DirecTV, Inc., 497 F.3d 144, 157–
58 (2d Cir. 2007).

“[A] district court evaluating whether an

advertisement is literally false must analyze the message conveyed
in full context . . . .

If the words or images, considered in

context, necessarily imply a false message, the advertisement is
literally false and no extrinsic evidence of consumer confusion is
required. However, . . . if the language or graphic is susceptible
to more than one reasonable interpretation, the advertisement
cannot be literally false[, though t]here may still be a basis for
a claim that the advertisement is misleading . . . .”

Id. at 158

(internal citations and quotation marks omitted).
Here, Wells claims that the words and pictures featured on
the Firecracker’s packaging necessarily and falsely imply that the
Firecracker (rather than the Bomb Pop) was the first rocket ice
pop.

Unilever challenges this claim, arguing that the word
7

“original”

on

the

Firecracker’s

packaging

is

read

literally,

clearly and truthfully indicating only that the product is the
original Firecracker.

As such, Unilever asserts, its packaging is

neither false nor misleading and Wells’s claim must fail.
Wells counters that the phrase “the original Firecracker” may
be interpreted more broadly when viewed in the context of the
package as a whole.

Specifically, Wells argues that the term

“original”

be

need

not

read

solely

to

apply

to

the

noun

(“Firecracker”) it modifies, but will necessarily be associated
with the rocket ice pops prominently displayed on the package,
thereby

leaving

the

consumer

with

the

Firecracker is the first of that product.

impression

that

the

See Def’s Opp’n at 5

(“[The] placement of the phrase “the Original” in close proximity
to the dominant feature of the packaging--three red-white-and-blue
missile-shaped ice pops--leads consumers to mistakenly believe
that the FIRECRACKER product is the original or first red-whiteand-blue rocket shaped ice pop.”); id. at 6 (“[T]he phrase, ‘The
Original,’ appearing in a contrasting blue color to the red color
of the word ‘Firecracker’ and adjacent to large images of the
Firecracker . . . , is false or misleading in the context of the
entire packaging . . . .”).
We find that Wells’s allegations are sufficient to state a
claim for falsity.

While it is true that manufacturers often

deploy the term “original” in a brand-specific way, to modify only
8

the product name, it is not evident from the face of the pleadings
that the word “original” must be read in this manner.

The brand-

specific use of “original” generally serves to distinguish between
different versions of the manufacturer’s product, identifying for
consumers that “the original” is different from, for instance,
“diet,” “low-salt,” “baked,” “creamy,” or “fun-shaped” versions.
As

far

as

Firecracker”
Unilever’s
tautological

the
is

present
the

record

only

Firecracker

brand-specific
and

shows,

suggesting

however,
that

interpretation
that

the

term

the

“original

exists,

rendering

of

the

“original”

phrase
may

be

intended to differentiate “the original Firecracker” from other
rocket ice pops rather than from other varieties of Firecracker.
Wells’s claim that “the original” may falsely convey originality
of

kind

rather

than

brand

is

also

supported

by

Unilever’s

deployment of “original” elsewhere on the Firecracker’s package,
where it indicates (truthfully) that Unilever’s “Popsicle” is “The
Original Brand” of ice pop, the first of the type of product.
In addition, our conclusion that the phrase “the Original
Firecracker” may constitute false advertising is supported by
decisions in which the use of the modifier ‘original’ has been
found capable of falsely implying that the modified term was the
first of its kind and thereby giving rise to claims of falsity
under the Lanham Act.

For instance, in Mantae America, Inc. v.

Drybranch, Inc., 91 Civ. 4822 (LMM), 1991 U.S. Dist. LEXIS 14451
9

(S.D.N.Y.

Oct.

7,

1991),

defendants

had

been

assigned

the

registered trademark for the name “Scatch” and subsequently sold
a game called “The Original Scatch.” The plaintiff, which produced
a game that had previously been called “Scatch” and had been sold
under

that

name

defendants’

use

before
of

the

“The

Original

term

Scatch,”

“original”

advertising in violation of the Lanham Act.

claimed

constituted

that
false

The court permitted

the plaintiff’s claim, rejecting the defendants’ argument that the
“use of the word ‘original’ modifies [only defendants’] trademark
SCATCH,” and finding instead that “The Original Scatch” “conveys
the impression either that the product is the same product that
was formerly sold under the name ‘Scatch’ or that the product is
the first introduced of games of the general type.
propositions, however, are false.” Id. at *2-3.

Both of such
Similarly, in

Zobmondo Entertainment LLC v. Imagination Int’l Corp., 09 Civ.
2235, 2009 WL 8714439 (ABC) (C.D. Cal. June 23, 2009), where the
plaintiff had “introduced the first board game based on the
traditional conversational game known as ‘would you rather’” and
the defendant subsequently debuted its own “would you rather” board
game titled “Justin & David’s Original Would You Rather . . . ?
Board Game,” the court found that the plaintiff could “proceed
with its [Lanham Act] claim that [defendant] is misrepresenting
that its board game was the first ‘would you rather’ board game.”
Id. at *5. Unilever’s branding of the Firecracker as “the original
10

Firecracker”

on

its

packaging

therefore

may

imply

that

the

Firecracker is the first rocket ice pop, and therefore may support
a claim for false advertising.
In

the

alternative,

Wells

has

Unilever’s packaging is misleading.

adequately

pleaded

that

To determine whether an

advertisement is misleading, a court “look[s] to consumer data to
determine what ‘the person to whom the advertisement is addressed
find[s] to be the message.’”

Time Warner Cable, Inc. v. DIRECTV,

Inc., 497 F.3d 144, 158 (2d Cir. 2007) (quoting Am. Home Products
Corp. v. Johnson & Johnson, 577 F.2d 160, 166 (2d Cir. 1978)).
Assuming arguendo that Unilever’s narrow reading of “the Original
Firecracker” is literally true, it is nevertheless plausible that
consumer studies would show that consumers interpret “original” on
the

Firecracker’s

packaging

to

indicate

“Firecracker” is the original rocket ice pop.

that

Unilever’s

Wells’s allegations

are thus sufficient to permit it to further develop facts on this
theory.
iii. Materiality
“[I]n addition to proving falsity, the plaintiff must also
show that the defendants misrepresented an inherent quality or
characteristic of the product.

This requirement is essentially

one of materiality, a term explicitly used in other circuits.”
Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 855 (2d
Cir. 1997) (internal citations and quotation marks omitted).
11

Unilever

argues

that

Wells

has

failed

to

allege

facts

sufficient to suggest that the originality of the Firecracker would
be

material

to

consumer

purchasing

decisions.

However,

as

“materiality is generally a question of fact poorly suited to a
determination at the pleadings stage,” LivePerson, Inc. v. 24/7
Customer,

Inc.,

14

Civ.

1559

(RWS),

2015

WL

249329,

at

*15

(S.D.N.Y. Jan. 16, 2015) (internal quotation mark omitted), we
find Wells’s allegations sufficient to state a claim.
For

one,

Unilever’s

own

decision

to

highlight

the

word

“original” on its packaging, at the forefront of the box and as
the largest word other than the product’s name, suggests the
relative

importance,

and

hence

materiality,

of

the

claim

to

originality in its marketing of rocket ice pops. More importantly,
given that very little distinguishes one rocket ice pop from
another, it is plausible that such a claim to originality could
sway a consumer, either by intimating that the manufacturer has a
proficiency in producing ice pops that has withstood the test of
time or by intimating that these “original” ice pops are the ones
the consumer remembers fondly from his childhood.

Because this

term could serve to differentiate otherwise similar rocket ice
pops, it is plausibly material.

See, e.g., LivePerson, Inc., 2015

WL 249329, at *14 (finding materiality sufficiently pled where
plaintiff

alleged

that

defendant

falsely

claimed

“to

have

developed the ‘first’ predictive or smart chat platform, when in
12

fact plaintiff did”); cf. Telebrands Corp. v. Wilton Indus., Inc.,
983 F. Supp. 471, 475 (S.D.N.Y. 1997) (finding “AS SEEN ON T.V.”
logo material because it “identifies the product as the one that
the consumer saw advertised, and differentiates it from other
products of a similar type”).
iv. Damages
Finally, Unilever challenges Wells’s false advertising claim
on the ground that Wells has failed to demonstrate injury as
required by the statute.
action

for

false

“To invoke the Lanham Act's cause of

advertising,

a

plaintiff

must

plead

(and

ultimately prove) an injury to a commercial interest in sales or
business

reputation

misrepresentations.”

proximately
Lexmark

caused

Int'l,

by

Inc.

v.

the

defendant's

Static

Control

Components, Inc., 134 S. Ct. 1377, 1395 (2014).
In its counterclaim, Wells catalogues “nineteen years of BOMB
POP packaging touting the BOMB POP as the original red-white-andblue rocket-shaped frozen ice pop,” Def’s Opp’n at 9, and notes
the corresponding goodwill that Wells has amassed over those two
decades, which Unilever’s claim to originality may be putting in
jeopardy.

See Counter-Complaint, ¶¶ 15-17, 28.

Because, at this

stage of the proceedings, “[p]laintiffs need not establish . . .
[or] prove . . . ., [but] must simply allege,” In re Natural Gas
Commodity Litig., 337 F. Supp. 2d 498, 508 (S.D.N.Y. 2004), these

13

allegations are sufficient to plead damages.

Unilever’s motion to

dismiss this claim is therefore denied.
C. New York General Business Law
To state a claim under New York General Business Law Sections
349 and 350, “the gravamen of the complaint must be consumer injury
or harm to the public interest.”

Securitron Magnalock Corp. v.

Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995); see also, e.g.,
Maurizio v. Goldsmith, 230 F.3d 518, 522 (2d Cir. 2000) (no claim
under either Section 349 or Section 350 where the “dispute is
fairly characterized as private . . . and without direct impact on
the body of consumers”).
Here, Unilever challenges Wells’s claims as insufficiently
consumer-oriented, arguing that the sole possible injury to the
public, rather than to Wells’s business, is confusion regarding
the ownership of intellectual property, which has been found
insufficient to state a claim under these provisions.

See, e.g.,

Gucci Am., Inc. v. Duty Free Apparel, Ltd., 277 F. Supp. 2d 269,
275

(S.D.N.Y.

2003)

(“Claims

that

arise

out

of

a

trademark

infringement action . . . constitute situations which courts have
found to reflect a public harm that is too insubstantial to satisfy
the pleading requirements of § 349.”); C=Holdings B.V. v. Asiarim
Corp., 992 F. Supp. 2d 223, 247 (S.D.N.Y. 2013).

Wells responds

that its allegations “pertain not to source confusion or confusion
over

the

ownership

of

intellectual
14

property,

but

rather

to

[Unilever’s]

false

consumers . . . .”

advertising,

which

Def’s Opp’n at 10.

has

materially

misled

By so misleading consumers,

Wells maintains, Unilever’s advertising poses a harm to the public
that merits redress under Sections 349 and 350.
Wells is correct that its General Business Law claims concern
false advertising rather than merely trademark infringement, and
thus

implicate

ownership
arising

of
from

more

than

intellectual
Unilever’s

nonactionable
property.”

allegedly

“confusion

Nevertheless,

over

false

advertising

the
is

the
harm
not

sufficiently directed at or borne by consumers to constitute the
“gravamen” of Wells’s complaint, as required by these provisions.
Namely, courts addressing the question of harm under these
provisions have drawn a distinction between false advertising
claims that pose a danger to the consumer and those that merely
encourage consumers to buy an inferior product or buy a product
from one company where they may have preferred to buy it from
another.

Compare, e.g., Weight Watchers Int'l, Inc. v. Stouffer

Corp., 744 F. Supp. 1259, 1285 (S.D.N.Y. 1990) (false advertising
involving diet and food would implicate public harm), and Leason
Ellis LLP v. Patent & Trademark Agency LLC, 13 Civ. 2880 VB, 2014
WL 3887194, at *1 (S.D.N.Y. July 2, 2014) (claims that defendant
“Patent & Trademark Agency LLC” “holds itself out as a government
entity” and “seeks to confuse trademark owners into purchasing
services under false color of authority” implicate public harm),
15

with SMJ Grp., Inc. v. 417 Lafayette Rest. LLC, 06 Civ. 1774 (GEL),
2006 WL 2516519, at *1 (S.D.N.Y. Aug. 30, 2006) (“Drawing all
inferences

in

plaintiffs’

favor,

the

most

serious

harm

an

individual member of the public could suffer as the result of
viewing one of defendants’ allegedly misleading leaflets is the
possibility
individual

that,
would

based
pass

on
up

the
a

claims
meal

at

in

the

one

leaflet,

of

the

plaintiffs’

establishments and settle for a less appetizing meal elsewhere.
That difference in relative meal satisfaction is a far cry from
the type of harm necessary to make out a claim under § 349, such
as a concern for public safety . . . or even the economic harm
generally associated with consumer frauds.”), and LBF Travel, Inc.
v. Fareportal, Inc., 13 Civ. 9143 LAK GWG, 2014 WL 5671853, at *3
(S.D.N.Y. Nov. 5, 2014) (finding plaintiff had “not alleged any
facts showing harm to the public” where it alleged that defendant
advertised false comparative savings claims, and noting that “even
if [plaintiff] had alleged that it or another competitor actually
offered better rates, ‘[t]he limited public harm alleged, that []
consumers

paid

more

for

an

allegedly

inferior

product,

is

incidental in nature and insufficient to support a claim’”).

In

particular, false advertising claims have been held sufficiently
consumer-oriented where they concern “the types of offenses to the
public

interest

that

would

trigger

Federal

Trade

Commission

intervention under 15 U.S.C. § 45, such as potential danger to the
16

public health or safety,” Sports Traveler, Inc. v. Advance Magazine
Publishers, Inc., 96 Civ. 5150 (JFK), 1997 WL 137443, at *2
(S.D.N.Y. Mar. 24, 1997), and/or where they involve governmental
functions or agencies, see, e.g., Securitron, 65 F.3d at (giving
false information to regulatory agency and causing it to undertake
unnecessary

investigations

was

contrary

to

public

interest);

Leason Ellis LLP, 2014 WL 3887194, at *1 (S.D.N.Y. July 2, 2014)
(falsely holding one’s self out as a government entity is contrary
to public interest).
The harm that arguably misled consumers face here--namely,
the lessened enjoyment of a confection of sugar, water, and
flavoring from a company other than the one intended--is far closer
to that faced in SMJ Grp. or LBF Travel than to any “potential
danger.”

Rather, the primary injury sought to be redressed is

harm to Wells’s business, with consumers allegedly erroneously
directed to partake of Unilever’s rocket ice pop rather than
Wells’s own.

As such, this case does not present “significant

ramifications for the public at large” above and beyond Wells’s
private injury.

Shred-It USA, Inc. v. Mobile Data Shred, Inc.,

228 F. Supp. 2d 455, 465 (S.D.N.Y. 2002), aff'd, 92 F. App'x 812
(2d Cir. 2004) (internal quotation marks omitted); see also, e.g.,
Romeo & Juliette Laser Hair Removal, Inc. v. Assara I LLC, 08 Civ.
442 TPG FM, 2014 WL 4723299, at *5 (S.D.N.Y. Sept. 23, 2014)
(“[False advertising and fraudulent reviews diverting customers
17

from plaintiff’s to defendants’ business] could arguably affect
the public interest in an abstract sense, but the plaintiff
provides no facts showing the public health or safety were injured.
If plaintiff had alleged that defendants’ rival . . . services
were unsafe or caused injuries, then the Section 349 claim would
be

sufficiently

stated.

However,

plaintiff

provides

no

facts

showing how defendants’ conduct injured the public interest, as
opposed to simply injuring its own business reputation.”).

These

claims are therefore dismissed for failure to state a claim.
D. Federal Trademark Infringement
To demonstrate trademark infringement under 15 U.S.C. § 1114,
a plaintiff must show that it owns a protectable mark and that the
defendant’s use of the mark is likely to cause consumers confusion
as to the origin or sponsorship of the defendant’s goods.

See,

e.g., Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.
2003).
Here, Wells has asserted a claim for trademark infringement
on the ground that it owns registered trademarks for the Bomb Pop
and that, if a likelihood of confusion as to the source of the
Bomb Pop exists, it does so as a result of Unilever’s infringement
of Wells’s trademarks.

Counter-Complaint ¶¶ 59-60.

Unilever

challenges this claim, arguing that Wells has failed to adequately
plead a likelihood of confusion because it has asserted only a
conditional claim arising “if there is a likelihood of confusion”
18

and has “deliberately refrained from affirmatively alleging any
likelihood of confusion.”

Pl’s Br. at 11-12.

As Wells notes, Wells is free to assert a counterclaim for
infringement that is conditional or contingent upon the outcome of
the plaintiff’s infringement claim.

See, e.g., Macia v. Microsoft

Corp., 335 F. Supp. 2d 507, 522 (D. Vt. 2004), aff'd, 164 F. App'x
17 (2d Cir. 2006) (dismissing as moot counterclaim for infringement
that

“was

pleaded

in

the

alternative

and

only

arises

if

a

likelihood of confusion is found”); Barr v. Dramatists Guild, Inc.,
573

F.

Supp.

555,

560

(S.D.N.Y.

1983)

(finding

defendants’

“counterclaim is properly framed as a hypothetical pleading”).
The claim may proceed without an explicit statement
However, Unilever is correct that, as part of its conditional
counterclaim, Wells has not made an affirmative allegation of
consumer confusion as required by the statute, requiring dismissal
of the counterclaim as pled.

Nevertheless, Wells can allege

consumer confusion while retaining the contingent posture of the
counterclaim by simply denoting that any allegations of consumer
confusion are limited solely to this particular counterclaim.
Because this defect can be cured easily without prejudice to
Unilever, this counterclaim is dismissed without prejudice and
Wells is granted leave to amend.

See, e.g., Elsevier Inc. v.

W.H.P.R., Inc., 692 F. Supp. 2d 297, 307 (S.D.N.Y. 2010).

19

E. New York Common Law Unfair Competition
Unilever also challenges Wells’s claim for common law unfair
competition for failure to affirmatively allege a likelihood of
confusion.

Because “[t]he elements necessary to prevail on causes

of action for trademark infringement and unfair competition under
New York common law mirror the Lanham Act claims,” Erickson Beamon
Ltd. v. CMG Worldwide, Inc., 12 Civ. 5105 (NRB), 2014 WL 3950897,
at *9 (S.D.N.Y. Aug. 13, 2014), our analysis of Wells’s common law
unfair competition claim mirrors our analysis of Wells’s Lanham
Act claim above.4
granted

leave

to

The claim is therefore dismissed, but Wells is
re-plead

to

affirmatively

allege

consumer

confusion for purposes of this counterclaim.

CONCLUSION
For the aforementioned reasons, Unilever’s motion to dismiss
is denied with respect to Wells’s Lanham Act false advertising
claim, granted with respect to Wells’s New York General Business
Law claims, and granted without prejudice with respect to Wells’s

4

Notably, while Wells’s counterclaim for “false advertising, unfair
competition and unfair business practices under the common law of New York
State” recites that “Unilever’s . . . using the Original Claim . . . confuses
or is likely to confuse the public and consumers,” Counter-Complaint ¶¶ 5455, this allegation refers to confusion about the rocket ice pops’
originality rather than their source; as such, it does not fulfill the
requirement that a plaintiff claiming unfair competition allege that “the
result of the defendant's alleged use [of plaintiff’s mark] ‘is a likelihood
of confusion between the marks of the alleged infringer and the charging
party.’” ESPN, Inc. v. Quiksilver, Inc., 586 F. Supp. 2d 219, 230 (S.D.N.Y.
2008).

20

federal trademark infringement and common law unfair competition
claims.

This Memorandum and Order resolves docket number 34.

SO ORDERED.

Dated:

New York, New York
May 13, 2015

NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE

21