Sugarfina v. Sweet Pete's - Motion To Dismiss

Case 2:17-cv-04456-RSWL-JEM Document 18 Filed 07/28/17 Page 1 of 21 Page ID #:120
1 KARIN G. PAGNANELLI (SBN 174763)

kgp@msk.com
2 MITCHELL SILBERBERG & KNUPP LLP
11377 West Olympic Boulevard
3 Los Angeles, CA 90064-1683
Telephone: (310) 312-2000
4 Facsimile: (310) 312-3100
5 MICHAEL G. KELBER (pro hac vice pending)
mkelber@ngelaw.com
6 ANDREW S. FRAKER (pro hac vice pending)
mturner@ngelaw.com
7 NEAL, GERBER & EISENBERG LLP
Two North LaSalle Street, Suite 1700
8 Chicago, IL 60602-381
Telephone: (312) 269-8000
9
Attorneys for Defendants
10 SWEET PETES LLC, ML SWEETS, LLC,
PETER BEHRINGER and ALLISON
11 BEHRINGER
12
13 UNITED STATES DISTRICT COURT
14 CENTRAL DISTRICT OF CALIFORNIA
15
16 SUGARFINA, INC., a Delaware CASE NO. 2:17-cv-4456-RSWL-JEM
corporation,
17 Honorable Ronald S.W. Lew
Plaintiff,
18 DEFENDANTS NOTICE OF
v. MOTION AND MOTION TO
19 DISMISS
SWEET PETES LLC, a Florida limited
20 liability company; ML SWEETS, LLC,
a Pennsylvania limited liability DATE: August 29, 2017
21 company; PETER BEHRINGER, an TIME: 10:00 a.m.
individual; and ALLISON CTRM.: tbd
22 BEHRINGER, an individual,
23 Defendants.
24
25
26
27
28
9118548.1
1
TABLE OF CONTENTS
2
Page
3
4 I. INTRODUCTION ............................................................................................. 1
5 II. LEGAL STANDARD ....................................................................................... 2
6 III. ARGUMENT ..................................................................................................... 2
7 A. Count I Plaintiff Fails to Adequately Allege Trade Dress
Infringement. .............................................................................................. 2
8
9 B. Count II - Plaintiff Fails to Adequately Allege Federal
Trademark Infringement with Respect to All Marks Except
10 PEACH BELLINI. ..................................................................................... 7
11 C. Count III Plaintiff Fails to Adequately Allege Common-Law

Trademark Infringement with Respect to All Marks Except
12 PEACH BELLINI. ..................................................................................... 9
13 D. Count IV Plaintiff Fails to Adequately Allege Unfair Business
14 Practices.................................................................................................... 11
15 E. Count V Unjust Enrichment Is Not a Cause of Action

in California.............................................................................................. 11
16
17 F. Count VI Plaintiff Fails to Adequately Allege Design
Patent Infringement. ................................................................................. 12
18 G. Count VII Plaintiff Fails to Adequately Allege Copyright
19 Infringement. ............................................................................................ 12
20 IV. CONCLUSION................................................................................................ 15
21
22
23
24
25
26
27
28
9118548.1
i
1 TABLE OF AUTHORITIES
2 Page(s)
CASES
3
Ashcroft v. Iqbal,
4 556 U.S. 662 (2009) ............................................................................................. 2
5 Bell Atl. Corp. v. Twombly,
6 550 U.S. 544 (2007) ............................................................................................. 2
7 Cleary v. News Corp.,

30 F.3d 1255 (9th Cir. 1994) .............................................................................. 11
8
9 CreAgri, Inc. v. USANA Health Sciences, Inc.,
474 F.3d 626 (9th Cir. 2007) ................................................................................ 8
10
DBC of New York, Inc. v. Merit Diamond Corp.,
11
768 F. Supp. 414 (S.D.N.Y. 1991) ..................................................................... 15
12
Deckers Outdoor Corp. v. Fortune Dynamic, Inc.,
13 2015 U.S. Dist. LEXIS 188274 (C.D. Cal. May 8, 2015).......................... 6, 7, 12
14
Disc Golf Ass'n, Inc. v. Champion Discs, Inc.,
15 158 F.3d 1002 (9th Cir. 1998) .............................................................................. 3
16 Entmt Research Grp., Inc. v. Genesis Creative Grp., Inc.,
17 122 F.3d 1211 (9th Cir. 1997) ............................................................................ 12
18 Greenberg v. Johnston,
19 2014 U.S. Dist. LEXIS 194325 (C.D. Cal. Oct. 22, 2014) ............................ 8, 10
20 Greenberg v. Johnston,
2015 U.S. Dist. LEXIS 187010 (C.D. Cal. Jan. 13, 2015)................................... 3
21
22 Haddix v. General Mills, Inc.,
2016 U.S. Dist. LEXIS 65108 (E.D. Cal. May 17, 2016) .................................. 11
23
L.A. Printex Indus., Inc. v. Aeropostale, Inc.,
24 676 F.3d 841 (9th Cir. 2012) .............................................................................. 12
25
Limo Hosting, Inc. v. Fiks,
26 No. C 08-2474 BZ, 2008 BL 280594 (N.D. Cal. Dec. 17, 2008) .................... 6, 8
27 McVicar v. Goodman Glob., Inc.,
28 1 F. Supp. 3d 1044 (C.D. Cal. 2014) .................................................................. 11
9118548.1
ii
TABLE OF AUTHORITIES
(Continued)
1 Quoc Viet Foods, Inc. v. VV Foods, LLC,
2 192 F. Supp. 3d 1067 (C.D. Cal. 2016) ................................................................ 8
3 Rosenfeld v. Twentieth Century Fox Film,

2008 U.S. Dist. LEXIS 92099 (C.D. Cal. Sept. 25, 2008) ................................... 7
4
5 Sleep Sci. Partners v. Lieberman,
2010 U.S. Dist. LEXIS 45385 (N.D. Cal. May 10, 2010) ............................... 3, 5
6
Two Pesos, Inc. v. Taco Cabana, Inc.,
7
505 U.S. 763 (1992) ............................................................................................. 5
8
Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
9 529 U.S. 205 (2000) ............................................................................................. 5
10
Walker & Zanger, Inc. v. Paragon, Indus.,
11 549 F. Supp. 2d 1168 (N.D. Cal. 2007)................................................................ 5
12 Wood v. Apodaca,
13 375 F. Supp. 2d 942 (N.D. Cal. 2005).................................................................. 9
14 STATUTES
15 California Business and Professions Code 17200 ................................................ 11
16 OTHER AUTHORITIES
17 37 C.F.R. 202.1(a) ................................................................................................ 15
18 Definition of Bento Box, Merriam-Webster Dictionary Online,
19 https://www.merriam-webster.com/dictionary/bento%20box (last
visited July 28, 2017)............................................................................................ 9
20
Definition of Concierge, Merriam-Webster Dictionary Online,
21
https://www.merriam-webster.com/dictionary/concierge (last
22 visited July 28, 2017).......................................................................................... 10
23 Federal Rules of Civil Procedure, Rule 12(b)(6)....................................................... 1
24
3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
25 19:36 (4th ed. 2008)........................................................................................... 8
26
27
28
9118548.1
iii
1 TO ALL PARTIES AND THEIR COUNSEL OF RECORD HEREIN:

2
3 PLEASE TAKE NOTICE that, on August 29, 2017, in the courtroom of The
4 Honorable Ronald S.W. Lew, of the United States District Court for the Central
5 District of California, 350 W. First Street, Los Angeles, CA 90012 at 10:00 a.m.,
6 or as soon thereafter as the matter may be heard, Defendants Sweet Petes LLC,
7 ML Sweets, LLC, Peter Behringer, and Allison Behringer shall, and hereby do,
8 move the Court pursuant to Federal Rules of Civil Procedure 12(b)(6) to dismiss
9 the Complaint with prejudice.
10
11 This Motion is made on the grounds that, as a matter of law, Plaintiff has
12 failed to allege sufficient facts to adequately allege each of its claims, with the
13 exception of its trademark claims with respect only to the mark PEACH BELLINI.
14
15 This Motion is and will be based on this Notice of Motion and Motion, the
16 accompanying Memorandum of Points and Authorities, any additional memoranda
17 in support thereof, and any argument presented at the hearing on this Motion.
18
19 The Motion is made following the Local Rule 7-3 conference, which took
20 place on Tuesday, July 25, 2017. During the telephone conference, Defendants
21 counsel identified several grounds upon which it basis the present Motion to
22 Dismiss, and asked Plaintiffs counsel whether her client would be willing to
23 amend its Complaint. On July 27, 2017, Plaintiffs counsel informed Defendants
24 counsel by email that Plaintiff will not be amending its Complaint. Though the
25 meet and confer occurred two business days after the time prescribed under Local
26 Rule 7-3, Plaintiffs counsel had a full opportunity to consider the issues identified
27 by Defendants, and the parties were unable to resolve them.
28
9118548.1
1
1 DATED: July 28, 2017 KARIN G. PAGNANELLI

MITCHELL SILBERBERG & KNUPP LLP
2
3 MICHAEL G. KELBER
ANDREW S. FRAKER
5
By: /s/ Karin G. Pagnanelli
6 Karin G. Pagnanelli
7 SWEET PETES LLC, ML SWEETS,
LLC, PETER BEHRINGER and
8 ALLISON BEHRINGER
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
9118548.1
2
1 MEMORANDUM OF POINTS AND AUTHORITIES

2
3 Introduction
4 Pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure,
5 Defendants hereby move to dismiss Plaintiffs Complaint for failure to state a
6 claim for which relief can be granted. 1 Plaintiffs Complaint, while rife with
7 irrelevant narrative, fails to allege sufficient facts to satisfy the required elements
8 of each of its claims. Because Plaintiffs scant factual allegations fail to set forth
9 plausible claims and to provide Defendants with adequate notice of the basis for
10 the claims, Plaintiffs Complaint should be dismissed.
11 I. INTRODUCTION
12 The parties are competitors in the market for candy. As Petitioners
13 Complaint notes, the Sweet Petes brand has enjoyed considerable success in
14 recent years, with significant increases in market share and revenue, after receiving
15 advice and exposure in 2014 while appearing on the CNBC show The Profit. The
16 growth of the Sweet Petes brand since then is attributable to the high quality of
17 Sweet Petes candy and related goods and services, the success of its promotional
18 efforts, and the diligence of its founders and staff. Sweet Petes has emerged as
19 Plaintiffs strong competitor, among many others in the industry.
20 Sweet Petes success is not a result of any infringement of Plaintiffs
21 intellectual property rights or other unfair business practices. A careful reading of
22 Plaintiffs Complaint makes this clear. Plaintiffs claims are stated in empty
23 generalities and baseless accusations of copying. Relying upon irrelevant,
24 unfounded allegations, Plaintiffs Complaint attempts to build a narrative that
25 falsely paints Sweet Petes as a bad actor instead of a successful competitor
26 gaining strength in the market. However, Plaintiffs Complaint lacks the concrete
27
1
Defendants do not move to dismiss Plaintiffs Second and Third Claims for Relief
28 only as they pertain to the PEACH BELLINI mark.
9118548.1
1
1 factual allegations required to adequately state its claims and to put Defendants on
2 notice of them. Examination of Plaintiffs claims, and the lack of underlying
3 factual support, reveals each of the claims to be fatally deficient.
4 II. LEGAL STANDARD
5 To survive a motion to dismiss, a complaint must contain sufficient factual
6 matter, accepted as true, to state a claim to relief that is plausible on its face.
7 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly,
8 550 U.S. 544, 570 (2007)). It is not sufficient merely to plead naked assertion[s]
9 devoid of further factual enhancement. Id. (internal quotation marks omitted).
10 A complaint must do more than allege labels and conclusions or a formulaic
11 recitation of the elements of a cause of action. Id.
12 Accordingly, when considering the sufficiency of a complaint, unsupported
13 conclusions are not entitled to a presumption of truth. Id. at 681. Rather, a
14 complaint must contain sufficient factual content to allow the court to draw the
15 reasonable inference that the defendant is liable for the misconduct alleged. Id. at
16 663. [W]here the well-pleaded facts do not permit the court to infer more than the
17 mere possibility of misconduct, the complaint has alleged but it has not
18 show[n] that the pleader is entitled to relief. Id. (quoting Fed. R. Civ. P.
19 8(a)(2)). If the plaintiffs factual allegations have not nudged [its] claims across
20 the line from conceivable to plausible, [the] complaint must be dismissed.
21 Twombly, 550 U.S. at 570. As set forth below, Plaintiffs Complaint fails to set
22 forth factual allegations on critical elements of Plaintiffs claims. Instead, it relies
23 on unsupported conclusions that are not entitled to a presumption of truth.
24 III. ARGUMENT
25 A. Count I Plaintiff Fails to Adequately
Allege Trade Dress Infringement.
26
27 To state a claim for trade dress infringement, a plaintiff must allege
28 sufficient facts tending to show that its trade dress (1) is nonfunctional; (2) is either
9118548.1
2
1 inherently distinctive or has acquired secondary meaning; and (3) is likely to be

2 confused with the defendants products by the consuming public. Disc Golf Ass'n,
3 Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th Cir. 1998).
4 As a threshold requirement prior to the evaluation of whether the asserted
5 trade dress satisfies these elements, a plaintiff must articulate the elements of the
6 trade dress with sufficient particularity to give notice of the rights the plaintiff
7 claims have been infringed. See, e.g., Greenberg v. Johnston, 2015 U.S. Dist.
8 LEXIS 187010 at *5 (C.D. Cal. Jan. 13, 2015) (A plaintiff is also required to
9 adequately define the trade dress for which it claims protection.); Sleep Sci.
10 Partners v. Lieberman, 2010 U.S. Dist. LEXIS 45385 at *7 (N.D. Cal. May 10,
11 2010) (A plaintiff should clearly articulate its claimed trade dress to give a
12 defendant sufficient notice.).
13 Here, Plaintiff has failed to do so. Plaintiff makes the following allegations
14 with respect to the elements of its claimed trade dress:
15 [Plaintiffs product packaging] has a distinctive
16 presentation and appearance a total image and overall
17 appearance that is unique, including features such as size,
18 shape, color or color combinations, texture, graphics, and
19 sales techniques. As shown below, the end result is a
20 luxury product that is accessible and visually appealing
21 to the ordinary observer.
22 Compl. at 43;
23 Each of these elements of the Sugarfina products is
24 distinctive and serves to identify Sugarfina as the source
25 of its products.
26 Id. at 44;
27
28
9118548.1
3
1 At present, certain elements of Sugarfinas product

2 packaging designs comprise the trade dress at issue in
3 this case (the Sugarfina Trade Dress) and may include:
4 the solid borderline around the product package
5 the use of a magnetic latch
6 a rectangular product package with minimal lettering;
7 the inside bottom surface of the product package
8 dominated by a series of cube wells or trays;
9 the series of cube wells each being spaced from one
10 another within the product packaging; and
11 a series of clear cubes containing candy product that
12 each reside in a corresponding cube well and are
13 immediately visible upon opening the box.
14 Id. at 45 (emphasis added);
15 Each of Sweet Petes line of accused products embodies
16 a combination of several elements of the Sugarfina
17 Product Trade Dress identified above, namely, a product
18 configuration with a total image and overall appearance
19 that is unique, including features such as size, shape,
20 color or color combinations, texture, graphics, and sales
21 techniques.
22 Id. at 64.
23 Most of the allegations above refer to Plaintiffs asserted trade dress in the
24 most abstract terms. Even when the Plaintiff does identify particular elements, it
25 fails to set forth a bounded list of such elements, as the list in Paragraph 45 is
26 offered only hypothetically and without limitation. The photographs included in
27 the Complaint similarly fail to provide sufficient notice of the claimed trade dress
28
9118548.1
4
1 without allegations specifically stating which elements of the products shown in

2 the photographs are alleged to have been infringed.
3 Plaintiffs trade dress claim should therefore be dismissed because it fails to
4 put Defendants on sufficient notice of what non-functional, distinctive trade dress
5 was allegedly infringed and how Defendants allegedly infringed it. See, e.g., Sleep
6 Sci. Partners v. Lieberman, 2010 U.S. Dist. LEXIS 45385 at *7-9 (dismissing trade
7 dress claim where the plaintiff did not clearly articulate which elements of website
8 look and feel constituted claimed trade dress and used language suggesting that
9 these [listed] components are only some among many); Walker & Zanger, Inc. v.
10 Paragon, Indus., 549 F. Supp. 2d 1168, 1176 (N.D. Cal. 2007) (describing
11 elements of trade dress with empty generalities fails to provide competitors with
12 adequate notice regarding the breadth of the plaintiffs exclusivity rights).
13 Moreover, the list set forth in Paragraph 45 of the Complaint (see above)
14 consists entirely of functional and/or nondistinctive elements. Trade dress is
15 protectable only to the extent that it is (a) non-functional and (b) distinctive. Wal-
16 Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000); Two Pesos, Inc.
17 v. Taco Cabana, Inc., 505 U.S. 763, 77 (1992). Plaintiff cannot plausibly claim
18 that elements such as the use of a magnetic latch and the series of cube wells
19 each being spaced from one another within the product packaging are non-
20 functional, nor that elements such as the solid borderline around the product
21 package and a rectangular product package with minimal lettering are
22 distinctive of Applicant and its goods.
23 Plaintiff offers only a single conclusory allegation that its trade dress is
24 nonfunctional, merely stating that [t]he Sugarfina Trade Dress, as embodied in
25 Sugarfina products is nonfunctional. In addition, the Sugarfina Trade Dress,
26 embodied in the packaging for the Sugarfina Products, is not functional.
27 Compl. at 82. Plaintiff alleges no facts whatsoever with respect to its trade dress
28 to support its claim of nonfunctionality. See id. at 42-47, 64-65, 81-91.
9118548.1
5
1 Plaintiffs claim should be dismissed for this reason because it lacks sufficient
2 allegations for an essential element of the claim. See Deckers Outdoor Corp. v.
3 Fortune Dynamic, Inc., 2015 U.S. Dist. LEXIS 188274 at *12-14 (C.D. Cal.
4 May 8, 2015) (dismissing trade dress claims because the plaintiff did not support
5 its conclusory allegation of non-functionality with facts alleging how the trade
6 dress was non-functional); Limo Hosting, Inc. v. Fiks, No. C 08-2474 BZ, 2008 BL
7 280594 at *1 (N.D. Cal. Dec. 17, 2008) (dismissing trade dress claim because non-
8 functionality allegations were conclusory and [m]issing are factual allegations of
9 non-functionality addressing such factors as utilitarian advantage, availability of
10 alternative designs, and economies in manufacture or use).
11 Plaintiff likewise fails to support its conclusory allegations of inherent
12 distinctiveness and secondary meaning with any facts. See Compl. at 82-83.
13 Instead, Plaintiff relies on vague generalities:
14 Sugarfinas product design immediately became
15 closely associated with Sugarfina.
16 Id. at 43.
17 [T]he Sugarfina Trade Dress, embodied in the
18 packaging for the Sugarfina products, is inherently
19 distinctive[.]
20 Id. at 82.
21 [B]ased on extensive and consistent advertising,
22 promotion and sales throughout the United States, the
23 Sugarfina Trade Dress has acquired distinctiveness and
24 enjoys secondary meaning among consumers,
25 identifying Sugarfina as the source of these products.
26 Id. at 83.
27 Sugarfinas extensive promotion of the distinctive
28 Sugarfina Trade Dress has resulted in Sugarfinas
9118548.1
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1 acquisition of valuable, legally protected rights in the

2 Sugarfina Trade Dress as well as considerable
3 customer goodwill.
4 Id. at 84.
5 Plaintiff does not allege any facts showing specific actions it has undertaken
6 to develop secondary meaning in the alleged trademarks, such as examples of
7 advertising that promotes an association between the alleged trade dress and
8 Plaintiff as the source, nor any alleged or promotional expenditures. Plaintiff
9 likewise does not allege any facts tending to show that consumers actually do
10 associate the alleged marks with Plaintiff. This also warrants dismissal of the trade
11 dress claim. See Deckers Outdoor Corp., 2015 U.S. Dist. LEXIS 188274 at *14-
12 17 (granting motion to dismiss trade dress claims where the plaintiff alleged only
13 general statements about promotional efforts and extensive sales).
14 Finally, Plaintiff also fails to identify which of Defendants products it
15 alleges violate its purported trade dress rights, referring only to Various Products
16 Using Sugarfinas Trade Dress in its Exhibit of Sweet Petes Accused Products.
17 See Compl. Exh. 8. Accordingly, Plaintiffs Complaint fails to put Defendants on
18 notice of which products Plaintiff believes are likely to cause confusion with
19 Plaintiffs trade dress. Plaintiffs claim should be dismissed for this reason as well.
20 B. Count II - Plaintiff Fails to Adequately Allege
Federal Trademark Infringement with Respect
21 to All Marks Except PEACH BELLINI.2
22 To state a claim for trademark infringement under the Lanham Act, a
23 plaintiff must allege sufficient facts that, taken as true, show that the defendant is
24 using a mark confusingly similar to [the plaintiffs] valid and protectible mark.
25 Rosenfeld v. Twentieth Century Fox Film, 2008 U.S. Dist. LEXIS 92099 at *8-9
26 (C.D. Cal. Sept. 25, 2008) (citing Brookfield Communications, Inc. v. West Coast
27 To the extent necessary at this time, defendants deny the allegations of federal
2
28 and common-law trademark infringement with respect to the PEACH BELLINI

mark.
9118548.1
7
1 Ent. Corp., Inc., 174 F.3d 1036, 1046 (9th Cir. 1999)). Here, Plaintiff asserts three
2 registered marks: CUBA LIBRE, CANDY BENTO BOX and PEACH BELLINI.
3 See Compl. at 30-33, 36-37.
4 However, Plaintiff neglects to mention in its Complaint that two of the
5 asserted marks, CUBA LIBRE and CANDY BENTO BOX, are registered on the
6 Supplemental Register. See Compl. Exhs. 1 and 3. A registration on the
7 Supplemental Register confers no substantive trademark rights beyond those under
8 common law. 3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
9 19:36 (4th ed. 2008). Accordingly, a registration on the Supplemental Register is
10 not entitled to the presumption of validity, see, e.g., CreAgri, Inc. v. USANA
11 Health Sciences, Inc., 474 F.3d 626, 629 n.6 (9th Cir. 2007), and indeed functions
12 as an implied admission that the marks were descriptive when they were placed
13 on the Supplemental Register. Quoc Viet Foods, Inc. v. VV Foods, LLC, 192 F.
14 Supp. 3d 1067, 1076 (C.D. Cal. 2016) (citing 3 J. McCarthy 19:43). Therefore,
15 like a plaintiff asserting an unregistered mark, a plaintiff alleging infringement of a
16 mark registered on the Supplemental Register must allege sufficient facts that, if
17 true, would show that the mark has gained secondary meaning. See, e.g.,
18 Greenberg v. Johnston, 2014 U.S. Dist. LEXIS 194325 at *12-13 (C.D. Cal. Oct.
19 22, 2014) (dismissing infringement claim for unregistered mark where allegations
20 of long running use of the words and investment in publicity and marketing
21 were insufficient to plausibly allege that [plaintiff] owns a valid trademark);
22 Limo Hosting, Inc. v. Fiks, No. C 08-2474 BZ, 2008 BL 280594 at *1 (N.D. Cal.
23 Dec. 17, 2008) (denying motion to dismiss claim for infringement of mark
24 registered on the Supplemental Register [b]ecause plaintiffs have alleged
25 sufficient facts to plead secondary meaning).
26 Plaintiffs applications were amended to the Supplemental Register on
27 September 15, 2015 (CANDY BENTO BOX) and February 23, 2016 (CUBA
28 LIBRE). Plaintiff has not alleged that these marks have acquired secondary
9118548.1
8
1 meaning in the less than two years since then, let alone setting forth facts to
2 support such an allegation. Accordingly, Plaintiff fails to allege sufficient facts to
3 plausibly establish that CUBA LIBRE and CANDY BENTO BOX are its valid
4 and protectable marks. Plaintiffs Lanham Act claim should therefore be
5 dismissed with respect to those marks.
6 C. Count III Plaintiff Fails to Adequately Allege
Common-Law Trademark Infringement with Respect
7 to All Marks Except PEACH BELLINI.
8 To state a claim for trademark infringement under California common law, a
9 plaintiff must allege (1) their prior use of the trademark and (2) the likelihood of
10 the infringing mark being confused with their mark. Wood v. Apodaca, 375 F.
11 Supp. 2d 942, 947-48 (N.D. Cal. 2005). Inherent in both prongs of this standard is
12 the requirement that the plaintiff sufficiently allege that it owns valid rights in the
13 asserted designation, i.e., that the designation actually constitutes a mark.
14 As a threshold matter, Plaintiffs common-law infringement claim actually
15 alleges violations of the Lanham Act rather than infringement under California
16 common law, see Compl. at 110 and 115, and should be dismissed for this
17 reason alone. Moreover, as set forth above, Plaintiff has not alleged secondary
18 meaning in its generic or, at best, merely descriptive marks registered on the
19 Supplemental Register.
20 The other purported marks Plaintiff asserts Fruttini, Candy Cube, and
21 Candy Concierge are equally merely descriptive and ineligible for trademark
22 protection for the same reasons. Fruttini and Cuba Libre are generic for the
23 flavors of drinks that Plaintiffs candies seek to replicate, and thus describe the
24 flavor of Plaintiffs candies. Candy Bento Box is generic for Plaintiffs candy
25 packaged in a bento box, which is defined as a multicompartment box used for
26 containing the different courses of a usually Japanese lunch. Definition of Bento
27 Box, Merriam-Webster Dictionary Online, https://www.merriam-
28 webster.com/dictionary/bento%20box (last visited July 28, 2017). In its Complaint,
9118548.1
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1 Plaintiff alleges that it was selling its designer three-by-three cell candy bento
2 boxes long before Sweet Petes. Compl. at 66. Plaintiffs own use of candy
3 bento box as a generic term for a multicompartment box containing candy shows
4 that the term is plainly generic. Likewise, Plaintiff admits in its Complaint that it
5 uses the purported mark Candy Cube in connection with packaging for candies
6 in the shape of a clear cube. Id. at 39. Candy Cube is plainly generic for
7 candy packaged in cube-shaped box. Finally, Plaintiff alleges that it uses the term
8 Candy Concierge to refer to its customer service team. Id. at 40. One
9 definition of the term concierge is a person employed (as by a business) to
10 make arrangements or run errands. Definition of Concierge, Merriam-Webster
11 Dictionary Online, https://www.merriam-webster.com/dictionary/concierge (last
12 visited July 28, 2017). Accordingly, Candy Concierge is generic for employees
13 who provide customer service and make arrangements for consumers of candy.
14 Plaintiff offers only the bare conclusory allegations that it has common law
15 trademark rights, valid trademark rights or prior rights in each mark, id. at
16 34, 40, 59, 105. Plaintiff fails to allege any facts supporting its claim that the
17 designations it is asserting are not generic and have come to function as trademarks
18 indicating Plaintiff as the source of goods. See, e.g., Greenberg v. Johnston, 2014
19 U.S. Dist. LEXIS 194325 at *12-13 (dismissing infringement claim for
20 unregistered mark where allegations of long running use of the words and
21 investment in publicity and marketing were insufficient to plausibly allege that
22 [plaintiff] owns a valid trademark). Accordingly, Plaintiffs claim of trademark
23 infringement under California common law lacks an essential element and should
24 be dismissed.3
25
26
27
28
3
Defendants do not move to dismiss this claim with respect to the mark PEACH
BELLINI.
9118548.1
10
1 D. Count IV Plaintiff Fails to Adequately

Allege Unfair Business Practices.
2
3 Plaintiff bases its claim for unfair business practices in violation of
4 California Business and Professions Code 17200 et seq. on the same allegations
5 Plaintiff sets forth in support of its claims for trade dress infringement and federal
6 and common-law trademark infringement. See Compl. at 116-128. In the
7 context of a trademark case, a plaintiff is required to make the same showing for
8 infringement and unfair competition. See Cleary v. News Corp., 30 F.3d 1255,
9 1262-63 (9th Cir. 1994) (This Circuit has consistently held that state common law
10 claims of unfair competition and actions pursuant to California Business and
11 Professions Code 17200 are substantially congruent to claims made under the
12 Lanham Act.). Because Plaintiff fails to sufficiently allege any of its underlying
13 trademark or trade dress claims, as set forth above, its claim for unfair business
14 practices must also fail.
15 E. Count V Unjust Enrichment
Is Not a Cause of Action in California.
16
17 It is well settled that California does not recognize a cause of action for
18 unjust enrichment. See, e.g., McVicar v. Goodman Glob., Inc., 1 F. Supp. 3d 1044,
19 1059 (C.D. Cal. 2014) (Courts consistently have held that unjust enrichment is not
20 a proper cause of action under California law.) (quoting In re Toyota Motor Corp.
21 Unintended Acceleration, Mktg., Sales Practices, & Prods. Liab. Litig., 754
22 F.Supp.2d 1145, 1194 (C.D. Cal. 2010)); Haddix v. General Mills, Inc., 2016 U.S.
23 Dist. LEXIS 65108 at *21 (E.D. Cal. May 17, 2016) (dismissing claim for unjust
24 enrichment with prejudice). Plaintiffs unjust enrichment claim must therefore be
25 dismissed.
26
27
28
9118548.1
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1 F. Count VI Plaintiff Fails to Adequately

Allege Design Patent Infringement.
2
3 To sufficiently allege infringement of a design patent, a plaintiff must:
4 (1) allege ownership of the patent, (2) name each defendant, (3) cite the patent,
5 (4) state the means by which the defendant allegedly infringes, and (5) point to the
6 sections of the patent law invoked. Deckers Outdoor Corp. v. Fortune Dynamic,
7 Inc., 2015 U.S. Dist. LEXIS 188274 at *17 (C.D. Cal May 8, 2015) (citing Hall v.
8 Bed Bath & Beyond, Inc., 705 F.3d 1357, 1362 (Fed. Cir. 2013)). In Plaintiffs
9 claim for infringement of its design patent, Plaintiff cites only a single section of
10 the Patent Act, 35 U.S.C. 285. See Compl. at 131-135. That section pertains
11 only to the award of attorneys fees in exceptional cases. Plaintiff fails to put
12 Defendants on notice of which section(s) of the patent law Plaintiff contends
13 Defendants violated. Plaintiffs claim should therefore be dismissed.
14 G. Count VII Plaintiff Fails to Adequately
Allege Copyright Infringement.
15
16 To properly plead copyright infringement, a plaintiff must allege sufficient
17 facts to show (1) ownership of a valid copyright, and (2) copying of constituent
18 elements of the work that are original. L.A. Printex Indus., Inc. v. Aeropostale,
19 Inc., 676 F.3d 841, 846 (9th Cir. 2012) (citing Feist Publ'ns, Inc. v. Rural Tel.
20 Serv. Co., 499 U.S. 340, 361 (1991)). Elements of a copyrighted work that are
21 purely functional, utilitarian or mechanical are not eligible for copyright protection
22 and therefore cannot be considered when determining originality. Entmt Research
23 Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1221-22 (9th Cir. 1997).
24 Here, Plaintiffs own allegations make it clear that it improperly attempts to
25 assert copyright protection in such elements: The Sugarfina copyrights cover the
26 same famous and original ornamental features of Sugarfina candy packaging as the
27 design patents, such as the spaced cube arrangement, the spaced cube receiving
28 wells, and the distinctive use of a box to hold the clear cubes. Compl. at 50.
9118548.1
12
1 Each of the cited elements, disingenuously described by Plaintiff as ornamental,

2 is plainly functional or utilitarian. Indeed, it is absurd that Plaintiff would attempt
3 to claim originality in the use of a box to hold cubes, which Plaintiff itself calls by
4 the common term bento box. Plaintiff further alleges that original and
5 distinctive qualities of Plaintiffs packaging include the configuration of three-
6 by-three cells or three cells of transparent cubes spaced apart and nested fully
7 within a rectangular box with high, straight walls; the use of die-cut labels on the
8 clear cubes within the outer box; and specific graphic elements designed by
9 Sugarfina, such as the prints, patterns, and colors imprinted on the boxes and
10 labels. Id. at 79.
11 However, Plaintiffs asserted copyrighted works are registered as 2-D
12 artwork, see Compl. Exhs. 6 and 7, meaning Plaintiffs copyright protection
13 extends only to the particular two-dimensional expression embodied in Plaintiffs
14 works, and not functional ideas such as the side-by-side arrangement of cubes
15 within a larger box, or the use of die-cut labels on cubic packages. Of Plaintiffs
16 purported original elements, the only ones that could possibly be argued to fall
17 within the scope of Plaintiffs copyright registration are the prints, patterns, and
18 colors imprinted on the boxes and labels. Notably, however, Plaintiff does not
19 provide side-by-side photo comparisons in connection with these allegations. This
20 is because Defendants accused packages plainly bear no similarity whatsoever to
21 Plaintiffs copyrighted works in terms of prints, patterns and colors.
22 Rearranging the photos included in Plaintiffs Complaint demonstrates this
23 clearly:
24 //
25 //
26 //
27 //
28 //
9118548.1
13
1
Plaintiffs copyrighted works Defendants packaging
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20 Plaintiffs copyrighted works are predominantly light blue, whereas
21 Defendants packaging is predominantly red. Plaintiffs works feature Plaintiffs
22 SUGARFINA mark in all lowercase letters, in a single row, by itself or with a
23 dessert tray design. Defendants packaging features the SWEET PETES mark by
24 itself or in a circle. Plaintiffs works also feature a scale design consisting of
25 overlapping layers of concentric circles, whereas Defendants packaging, to the
26 extent that it features a repeating graphic element, uses diagonal stripes. These
27 elements are entirely dissimilar.
28
9118548.1
14
1 To the extent that Plaintiff purports to claim copyright protection in elements

2 such as the use of a white border at the edge of the box and the depiction of a circle
3 superimposed over a vertical band, such a claim is improper. The Copyright Act
4 expressly excludes familiar symbols or designs such as these from copyright
5 protection. 37 C.F.R. 202.1(a); see also, e.g., DBC of New York, Inc. v. Merit
6 Diamond Corp., 768 F. Supp. 414, 416 (S.D.N.Y. 1991) (Insofar as a shape is in
7 the public domain, (circles, squares, rectangles and ellipses) no copyright may be
8 claimed[.]). In the context of the proper scope of Plaintiffs copyright protection,
9 Plaintiffs claim of infringement fails because Plaintiff has not alleged, and cannot
10 allege, substantial similarity with respect to protectable original expression.
11 Plaintiffs claim for copyright infringement should therefore be dismissed.
12 IV. CONCLUSION
13 For these reasons, Defendants respectfully request that the Court enter an
14 Order granting its Motion and dismissing all of Plaintiffs claims with prejudice,
15 with the exception of Counts II and III as they pertain to the mark PEACH
16 BELLINI, and granting any other relief the Court deems appropriate.
17
18 DATED: July 28, 2017 KARIN G. PAGNANELLI
MITCHELL SILBERBERG & KNUPP LLP
19
20 MICHAEL G. KELBER
ANDREW S. FRAKER
22
23 By: /s/ Karin G. Pagnanelli
Karin G. Pagnanelli
24 Attorneys for Defendants
SWEET PETES LLC, ML SWEETS,
25 LLC, PETER BEHRINGER and
ALLISON BEHRINGER
26
27
28
9118548.1
15
Case 2:17-cv-04456-RSWL-JEM Document 18-1 Filed 07/28/17 Page 1 of 2 Page ID #:141
1 KARIN G. PAGNANELLI (SBN 174763)

kgp@msk.com
2 MITCHELL SILBERBERG & KNUPP LLP
11377 West Olympic Boulevard
3 Los Angeles, CA 90064-1683
Telephone: (310) 312-2000
4 Facsimile: (310) 312-3100
5 MICHAEL G. KELBER (pro hac vice pending)
mkelber@ngelaw.com
6 ANDREW S. FRAKER (pro hac vice pending)
mturner@ngelaw.com
Two North LaSalle Street, Suite 1700
8 Chicago, IL 60602-381
Telephone: (312) 269-8000
9
10 SWEET PETES LLC, ML SWEETS, LLC,
PETER BEHRINGER and ALLISON
11 BEHRINGER
12
13 UNITED STATES DISTRICT COURT
14 CENTRAL DISTRICT OF CALIFORNIA
15
16 SUGARFINA, INC., a Delaware CASE NO. 2:17-cv-4456-RSWL-JEM
corporation,
Plaintiff,
18 [PROPOSED] ORDER GRANTING
v. DEFENDANTS MOTION TO
19 DISMISS
SWEET PETES LLC, a Florida limited
20 liability company; ML SWEETS, LLC,
a Pennsylvania limited liability
21 company; PETER BEHRINGER, an
individual; and ALLISON
22 BEHRINGER, an individual,
23 Defendants.
24
25
26
27
Mitchell 28
Silberberg &
Knupp LLP
9116391.1
Case 2:17-cv-04456-RSWL-JEM Document 18-1 Filed 07/28/17 Page 2 of 2 Page ID #:142
1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

2
3 On August 29, 2017, Defendants Sweet Petes LLC, ML Sweets, LLC, Peter
4 Behringer, and Allison Behringers Motion to Dismiss Complaint With Prejudice
5 came on regularly for hearing, before the Honorable Ronald S.W. Lew, presiding.
6
7 After full consideration of the pleadings, the moving, opposition, and reply
8 papers, and the argument of counsel, and good cause appearing therefore;
9
10 IT IS THEREFORE ORDERED, ADJUDGED, AND DECREED:
11
12 That Defendants Motion to Dismiss Complaint With Prejudice is hereby
13 GRANTED, without leave to amend.
14
15
16 DATED: ___________, 2017
United States District Court Judge
18
19
20
21
22
23
24
25
26
27
Mitchell 28
Silberberg &
Knupp LLP
9116391.1
1

Sugarfina v. Sweet Pete's - Motion To Dismiss

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Sugarfina v. Sweet Pete's - Motion To Dismiss

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Case 2:17-cv-04456-RSWL-JEM Document 18 Filed 07/28/17 Page 1 of 21 Page ID #:120

1 KARIN G. PAGNANELLI (SBN 174763)

11 C. Count III Plaintiff Fails to Adequately Allege Common-Law

15 E. Count V Unjust Enrichment Is Not a Cause of Action

7 Cleary v. News Corp.,

3 Rosenfeld v. Twentieth Century Fox Film,

1 TO ALL PARTIES AND THEIR COUNSEL OF RECORD HEREIN:

1 DATED: July 28, 2017 KARIN G. PAGNANELLI

1 MEMORANDUM OF POINTS AND AUTHORITIES

1 inherently distinctive or has acquired secondary meaning; and (3) is likely to be

1 At present, certain elements of Sugarfinas product

1 without allegations specifically stating which elements of the products shown in

1 acquisition of valuable, legally protected rights in the

28 and common-law trademark infringement with respect to the PEACH BELLINI

1 D. Count IV Plaintiff Fails to Adequately

1 F. Count VI Plaintiff Fails to Adequately

1 Each of the cited elements, disingenuously described by Plaintiff as ornamental,

1 To the extent that Plaintiff purports to claim copyright protection in elements

1 KARIN G. PAGNANELLI (SBN 174763)

1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

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