Sugarfina v. Bouquet Bar - Motion To Dismiss

Case 8:18-cv-01305-CJC-DFM Document 39 Filed 09/10/18 Page 1 of 2 Page ID #:168
1 Deborah A. Gubernick
DGubernick@Calljensen.com
2 Samuel G. Brooks
3 SBrooks@Calljensen.com
CALL & JENSEN
4 A Professional Corporation
610 Newport Center Drive, Suite 700
5 Newport Beach, CA 92660
6 Tel: (949) 717-3000
Fax: (949) 717-3100
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Attorneys for Defendants
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10 UNITED STATES DISTRICT COURT
11 CENTRAL DISTRICT OF CALIFORNIA
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SUGARFINA, INC., a Delaware Case No. 8:18-cv-01305-CJC-DFM
14 corporation,
NOTICE OF MOTION AND MOTION
15 Plaintiff, TO DISMISS COMPLAINT
16 vs.
17 Date: October 15, 2018
BOUQUET BAR, INC., a Delaware Time: 1:30 PM
18 corporation; BOUQUET BAR, LLC, a Place: 411 W. Fourth St.
Wyoming limited liability company; Santa Ana, CA 92701
19 DAVID (DAOUD) YUSUF, an individual; Courtroom 9B
20 ALEX AMIDI, an individual; JEFFREY Judicial Officer: Hon. Cormac J. Carney
MATSEN, an individual; and SAL AZIZ,
21 an individual,
22 Defendants.
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24 Complaint Filed: July 27, 2018
Trial Date: None Set
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NOTICE OF MOTION AND MOTION TO DISMISS COMPLAINT
Case 8:18-cv-01305-CJC-DFM Document 39 Filed 09/10/18 Page 2 of 2 Page ID #:169
1 TO PLAINTIFF AND ITS ATTORNEYS OF RECORD, PLEASE TAKE

2 NOTICE that on October 15, 2018 at 1:30 PM, in Courtroom 9B of the Ronald Reagan
3 Federal Building and United States Courthouse located at 411 W. Fourth Street, Santa
4 Ana, California 92701, Defendants Bouquet Bar, Inc., Bouquet Bar, LLC, David Yusuf,
5 Alex Amidi, and Sal Aziz will and hereby do move to dismiss the Complaint in this
6 action.
7 The motion to dismiss is made pursuant to Rule 12(b) of the Federal Rules of
8 Civil Procedure on the grounds that the Complaint fails to state a claim upon which
9 relief can be granted. The motion is supported by the accompanying memorandum of
10 points and authorities and request for judicial notice. This motion is made following the
11 conference of counsel pursuant to L.R. 7-3 which took place on September 4, 2018.
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13 Dated: September 10, 2018 CALL & JENSEN
A Professional Corporation
Samuel G. Brooks
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By: /s/ Samuel G. Brooks
17 Samuel G. Brooks
18 Attorneys for Defendants
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NOTICE OF MOTION AND MOTION TO DISMISS COMPLAINT
Case 8:18-cv-01305-CJC-DFM Document 39-1 Filed 09/10/18 Page 1 of 21 Page ID #:170
2 Samuel G. Brooks
CALL & JENSEN
6 Tel: (949) 717-3000
Fax: (949) 717-3100
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14 corporation,
MEMORANDUM OF POINTS AND
15 Plaintiff, AUTHORITIES IN SUPPORT OF
MOTION TO DISMISS
16 vs.
17
BOUQUET BAR, INC., a Delaware Date: October 15, 2018
18 corporation; BOUQUET BAR, LLC, a Time: 1:30 PM
Wyoming limited liability company; Place: 411 W. Fourth St.
19 DAVID (DAOUD) YUSUF, an individual; Santa Ana, CA 92701
20 ALEX AMIDI, an individual; JEFFREY Courtroom 9B
MATSEN, an individual; and SAL AZIZ, Judicial Officer: Hon. Cormac J. Carney
21 an individual,
22 Defendants.
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BOU04-01:2277221_1:9-10-18
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS
1 TABLE OF CONTENTS
2 Page
3 I. INTRODUCTION ..................................................................................................... 1
4 II. FACTUAL ALLEGATIONS .................................................................................... 1
5 III. ARGUMENT ............................................................................................................. 4
6
A. The Complaint fails to state a claim for trade dress
7 infringement/unfair competition...................................................................... 4
8 B. The Complaint fails to state a claim for patent infringement ......................... 8
9 C. The Complaint fails to state a claim for copyright
infringement .................................................................................................. 11
10
11 1. The registered copyrights are for photos and drawings
of Plaintiff’s boxes—not the boxes themselves .................................. 12
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2. The Complaint does not identify any works that are
13 similar to the registered photographs .................................................. 16
14 IV. CONCLUSION ........................................................................................................ 17
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1 TABLE OF AUTHORITIES
2 Page
3
FEDERAL CASES
4
5 Ashcroft v. Iqbal,
6 556 U.S. 662 (2009) ...................................................................................................... 4
7 Bell Atlantic Corp. v. Twombly,
8 550 U.S. 544 (2007) ...................................................................................................... 1
9 Egyptian Goddess, Inc. v. Swisa, Inc.,
10 543 F.3d 665 (Fed. Cir. 2008)....................................................................................... 8
11 Ets-Hokin v. Skyy Spirits, Inc.,
12 225 F.3d 1068 (9th Cir. 2000)..................................................................................... 15
13 Fabrica Inc. v. El Dorado Corp.,
14 697 F.2d 890 (9th Cir. 1983)....................................................................................... 15
15 Gorham Mfg. Co. v. White,
16 81 U.S. 511 (1871) ........................................................................................................ 8
17 Klarfeld v. United States,
18 944 F.2d 583 (9th Cir. 1991)......................................................................................... 1
19 OddzOn Prods., Inc. v. Just Toys, Inc.,
20 122 F.3d 1396 (Fed. Cir. 1997)..................................................................................... 8
21 Qualitex Co. v. Jacobson Products Co., Inc.,
22 514 U.S. 159 (1995) ...................................................................................................... 7
23 Razer Auto, Inc. v. Omix-ADA, Inc.,
24 No. SACV-16-00300-AGS-PX, 2016 WL 6678008 (C.D. Cal. Apr. 20, 2016) .......... 8
25 Rearden LLC v. Rearden Commerce, Inc.,
26 683 F.3d 1190 (9th Cir. 2012)....................................................................................... 4
27 Swartz v. KPMG LLP,
28 476 F.3d 756 (9th Cir. 2007)......................................................................................... 1
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1 TABLE OF AUTHORITIES (con’t)

2 Page
3 Times Three Clothier, LLC v. Spanx, Inc.,
4 2014 WL 1688130 (S.D.N.Y. Apr. 29, 2014) .............................................................. 8
5 TrafFix Devices, Inc. v. Marketing Displays, Inc.,
6 532 U.S. 23 (2001) ........................................................................................................ 7
7 Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
8 529 U.S. 205 (2000) ...................................................................................................... 4
9 FEDERAL STATUTES
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15 U.S.C. § 1125(a)(3) ...................................................................................................... 4
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17 U.S.C. §101 ................................................................................................................ 15
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17 U.S.C. § 102(a)(5) ...................................................................................................... 14
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14 FEDERAL RULES
15 Rule 12(b)(6) of the Federal Rules of Civil Procedure ..................................................... 1

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1 I. INTRODUCTION
2 While Plaintiff’s complaint attempts to demonize Defendants as copycats and
3 infringers, the true motivation behind this action is clear: Plaintiff merely wants to stifle
4 fair competition. The design features for which Plaintiff purports to claim exclusive
5 rights are both common and functional. Plaintiff essentially claims that it should be
6 granted a monopoly on selling candies and other gifts in attractive, high quality boxes.
7 Such a monopoly would put competitors such as Bouquet Bar at a competitive
8 disadvantage that has nothing to do with reputation.
9 As explained below, Plaintiff cannot use the trademark laws to prevent
10 competitors from using functional packaging designs for their products. As for
11 Plaintiff’s other claims, even assuming for the sake of argument that the patent and
12 copyrights are valid no reasonable finder of fact could conclude that Defendants
13 infringed Plaintiff’s rights. In short, Plaintiff’s complaint fails to state any claim on
14 which relief can be granted, and it cannot be amended to state such a claim. Therefore,
15 Defendants respectfully request this action be dismissed with prejudice.
16 II. FACTUAL ALLEGATIONS
17 On a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil
18 Procedure, a court may generally consider only allegations contained in the pleadings,
19 exhibits attached to the complaint, and matters properly subject to judicial notice.
20 Swartz v. KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007). The properly pleaded facts in
21 the complaint are presumed to be true. Klarfeld v. United States, 944 F.2d 583, 585 (9th
22 Cir. 1991). Unlike factual allegations, courts “are not bound to accept as true a legal
23 conclusion couched as a factual allegation.” Bell Atlantic Corp. v. Twombly, 550 U.S.
24 544, 555 (2007). The following recitals of Plaintiff’s factual allegations are made
25 without admitting their truth, but with the assumption for purposes of this motion that
26 they are true.
27 According to Plaintiff, Joshua Resnick and Rosie O’Neill launched Sugarfina in
28 2012 with the intent of creating a luxury candy and gift-giving brand. [Complaint ¶¶ 1-
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1 2]. Sugarfina products are currently available to the public both online and in luxury
2 retail stores, and Sugarfina also caters to corporate clients. [Complaint ¶¶ 3-5]. While
3 Defendants have their doubts about Sugarfina’s claim for extensive brand recognition,
4 the Complaint alleges that Sugarfina’s distribution channels are well established, and
5 that it has a popular following in the United States. [Complaint ¶¶ 6, 8]. Plaintiff alleges
6 that it has advertised extensively in the United States, and has also received unsolicited
7 media attention throughout the world. [Complaint ¶¶ 27-28]. According to the
8 Complaint, Sugarfina has also received various awards. [Complaint ¶ 30].
9 According to the Complaint, Plaintiff has utilized a variety of product designs
10 and packaging with certain common thematic elements. At the most basic level,
11 individual packages of Sugarfina candies may be purchased at its retail stores in
12 individual clear plastic cubes. [See Complaint ¶ 64 (Sugarfina store display)]. Perhaps
13 more commonly, Sugarfina candies may be purchased in combinations of two, three,
14 four, or eight cubes, which are packaged together in a paper gift box. [See Complaint ¶¶
15 32, 34, 64]. According to the images displayed in the Complaint, Plaintiff’s two-, three-,
16 and four-cube gift boxes consist of a high-sided rectangular or square box, open at the
17 top, which nests with a slightly larger rectangular or square box that is open at the end.
18 [See Complaint ¶¶ 32, 34, 64, Exh. 1]. By contrast, the eight-cube boxes have a hinged
19 lid that attaches along one edge, and closes with a flap (presumably magnetic) on the
20 opposite side. [See Complaint Exh. 2]. Regardless of the size, each box utilizes a raised
21 paper tray with well cut-outs. [See Complaint ¶¶ 32, 34, 64, 78, Exhs. 1, 2]. As shown
22 in the Complaint, these wells secure the cubes in place within the box, and provide
23 space surrounding each cube.
24 Sugarfina has applied for several trademarks, including three applications to
25 register trade dress. In November 2014, the United States Patent and Trademark Office
26 (USPTO) refused Plaintiff’s application to register a shade of blue used on its
27 packaging on the grounds that Plaintiff had not established secondary meaning.
28 [Request for Judicial Notice (“RJN”) ¶ 2, Exh. 2]. Rather than attempt to prove
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1 secondary meaning (required for registration on the Principal Register), Plaintiff settled
2 for registration on the Supplemental Register.1 [RJN ¶ 3, Exh. 3]. More recently,
3 Plaintiff filed applications to register the design of its clear plastic cubes as trade dress.
4 [RJN ¶ 5, Exhs. 6, 7]. These applications were refused on the grounds that a “cube-
5 shaped, clear box is a common design for candy packaging that is not unique and would
6 not be capable of creating a commercial impression.” [RJN ¶ 6, Exhs. 8, 9].
7 Plaintiff alleges that in 2017 Defendants began producing, selling, and marketing
8 what it pejoratively refers to as “copycat products.” [Complaint ¶ 64]. Sticking to the
9 facts, Plaintiff’s allegation is that Defendants sell candy products “in cubes and gift
10 boxes with spaced cube receiving wells.” [Complaint ¶ 63]. The images in the
11 Complaint depicting Defendants’ products feature opaque orange cubes containing
12 products such as candies, nuts, tea packets, and plants.2 [Complaint ¶ 64]. Most of these
13 cubes are closed with a clear plastic lid and a paper band bearing the words
14
15
1
Registration on the Supplemental Register does not constitute recognition of any
16 exclusive rights, but rather merely establishes the registrant’s date of claimed priority.
As explained by McCarthy,
17 The Supplemental Register fits uncomfortably alongside the Principal
Register. This is because while the Principal Register is a register of
18 designations that have been used as real trademarks and service marks, the
Supplemental Register is a listing of non-mark designations (such as
19 descriptive words) that are only “capable” of someday becoming a “mark”
upon the acquisition of secondary meaning. That is, a designation on the
20 Supplemental Register is not a “trademark” at all. For this reason, a
supplemental registration confers no significant substantive benefits beyond
21 those at common law.
3 McCarthy on Trademarks and Unfair Competition § 19:33 (5th ed.). It should come as
22 no surprise that Sugarfina did not push for registration of the blue color. Sugarfina’s
“swimming pool blue” is very similar to Tiffany’s famous “robin egg blue.” [Compare
23 RJN Exh. 1 with RJN Exh. 5]. Tiffany & Co. has registered its blue color for use on a
wide variety of goods. [See RJN Exhs. 4, 5]. A gift box in Tiffany Blue immediately
24 evokes the impression that whatever gift lies within is a luxury item of the highest
quality. See, e.g., Robert Klara, How Tiffany’s Iconic Box Became the World’s Most
25 Popular Package, Adweek, Sept. 22, 2014, available at
https://www.adweek.com/brand-marketing/how-tiffany-s-iconic-box-became-world-s-
26 most-popular-package-160228/. Sugarfina no doubt considers its products to be the
“Tiffany of candies,” and it would be surprising (to put it mildly) if Sugarfina did not
27 intend to borrow some goodwill from Tiffany in its selection of “swimming pool blue”
for its boxes.
28 2 The image in the complaint shows a succulent. [Complaint ¶ 64].
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1 “BOUQUET BAR” in capital letters.3 [Complaint ¶ 64]. The cubes are sold in gift
2 boxes in combinations of two, three, or six. [Complaint ¶ 64]. The gift boxes are white
3 on the interior, and orange on the exterior. [Complaint ¶ 64]. The boxes are closed with
4 a lid that lifts off the top of the box, and the top edge of each box is beveled to allow the
5 lid to lie flush with the exterior of the box. [Complaint ¶ 64]. The words “BOUQUET
6 BAR” are printed in gold lettering on the lid, below a wheel-like design of six orange
7 lower case “b’s” arranged on a golden circle. [Complaint ¶ 64]. Each gift box contains a
8 tray with well cut-outs that secure each cube in place and provide for space surrounding
9 each cube. [Complaint ¶ 64].
10 III. ARGUMENT
11 A. The Complaint fails to state a claim for trade dress
12 infringement/unfair competition
13 Plaintiff cannot state a claim for infringement of trade dress because it has not
14 alleged facts sufficient to support a finding that its alleged trade dress is not functional.
15 Where, as here, the alleged trade dress is not registered the party claiming trademark
16 rights bears the burden of proof on this important issue. 15 U.S.C. § 1125(a)(3). As
17 such, to avoid dismissal the Complaint must allege facts plausibly establishing this
18 element of Plaintiff’s claim. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Not only does
19 the Complaint fail to allege facts to support a plausible claim, it cannot be amended to
20 state a claim for relief because the trade dress as defined obviously is functional.
21 Plaintiff’s claims for trade dress infringement and unfair competition under California
22 law4 must be dismissed with prejudice.
23 Assuming Plaintiff’s alleged trade dress is properly considered to be packaging,5
24 such packaging is clearly functional. It is generally acknowledged that “[i]f a certain
25
3
The cube containing a succulent is shown without a lid.
26 4
Plaintiff’s state law claims are based entirely on the allegations in its claims for federal
trade dress infringement, and are governed by the same principles. See Rearden LLC v.
27 Rearden Commerce, Inc., 683 F.3d 1190, 1221 (9th Cir. 2012).
5 Plaintiff characterizes its alleged trade dress as product packaging, rather than product
28 design in the hopes of avoiding the burden to prove secondary meaning. See Wal-Mart
Continued on the next page
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1 type of packaging claimed as trade dress is commonplace or functional, use by a

2 competitor cannot constitute unfair competition.” 1 McCarthy on Trademarks and
3 Unfair Competition § 7:87 (5th ed.); see also id. (“An element of a product container or
4 wrapper may be functional because it contributes to efficiency or economy in
5 manufacturing or handling, or to durability.”). And courts have consistently found
6 packaging elements such as transparency and the box-like shape of containers to be
7 functional. See id. (collecting cases).
8 Here, the functional nature of Plaintiff’s alleged trade dress is self-evident. First,
9 Plaintiff claims the exclusive right to use “clear top cubes” for candy, both individually
10 and in a series. [Complaint ¶ 34]. Plaintiff also claims rights for “a rectangular or square
11 product package with minimal lettering.” Obviously, boxes are both commonplace and
12 functional for holding candy, and the “clear top” of such a box serves the function of
13 allowing the consumer to see the contents of the box prior to opening it. These elements
14 of the alleged trade dress are inherently functional. Indeed, Plaintiff’s attempts to
15 register its clear cubic boxes as trade dress have been firmly refused by the USPTO on
16 the grounds that a “cube-shaped clear box” is “incapable of functioning as a mark.”
17 [RJN ¶ 6, Exhs. 8, 9].
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Continued from the previous page
20 Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209-15 (2000) (distinguishing between
product packaging and product design, and requiring proof of secondary meaning for
21 protection of product design trade dress). However, Plaintiff’s characterization of its
trade dress as packaging is contradicted by other allegations in the Complaint. In
22 particular, Plaintiff alleges that the presentation of its candy in “museum-quality
material” “emphasizes the artisanal and rarified quality of a gourmet small-portion
23 tasting experience.” [Complaint ¶ 8]. Furthermore, Plaintiff claims a design patent for
its candy box design, which strongly indicates that the box is not simply packaging, but
24 is instead an integral part of the product itself. In other words, according to the
Complaint, Plaintiff’s product is not just candy, but rather a gourmet experience in
25 which the box is as important as its contents.
Under these circumstances, the trade dress should be considered product design—
26 not product packaging. Nevertheless, the question whether the alleged trade dress is
packaging or product design need not be resolved at this time because this motion does
27 not ask the Court to determine whether Plaintiff’s alleged trade dress is distinctive.
Rather, the motion is made on the grounds that the Complaint fails to allege facts
28 sufficient to support a finding that the trade dress is not functional.
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1 To the extent Plaintiff seeks trade dress protection for its label designs, described
2 as “a patterned band, overlaid shapes (namely, circles, diamonds, or hearts), and a
3 triangular end-tab,” the Complaint fails to allege facts establishing that such a label
4 design is not functional. The images in the Complaint suggest that this label design
5 serves the important function of securing the lids of its cube-shaped boxes. Without
6 such a band, box lids would not remain in place during handling or delivery. If Plaintiff
7 did not employ these bands, individuals receiving a Sugarfina brand box of candies
8 would not be guaranteed a “rarified” “gourmet small-portion tasting experience,” but
9 might instead be treated to a jumbled mess of mixed candies randomly scattered around
10 an otherwise beautiful container. In other words, the band element of Plaintiff’s alleged
11 trade dress clearly “contributes to efficiency or economy in manufacturing or handling,
12 or to durability.” 1 McCarthy on Trademarks and Unfair Competition § 7:87 (5th ed.).
13 Plaintiff’s claim for trade dress rights in a “series of cube wells or trays” on the
14 “inside bottom surface of the product package,” with the wells “each being spaced from
15 one another within the product package” is barred for the same reason—these elements
16 are inherently functional and therefore incapable of protection as trade dress. The
17 images in Plaintiff’s complaint depict combinations of two, three, or eight candy cubes
18 contained within a larger box of approximately the same depth as the cubes. [Complaint
19 ¶¶ 32, 34]. The larger box contains a tray with individual wells for each cube. [Id.].
20 These wells space the cubes from each other and from the sides of the larger box. [Id.].
21 Just as the band on each cube keeps the lid of each clear box in place, the wells in
22 Plaintiff’s packaging keep each clear cube in its proper place within the larger package.
23 Without these wells, the cubes would slide around inside the larger box. Moreover, by
24 creating space around each cube, the welled tray allows the consumer to grasp an
25 individual cube and remove it from the larger box without dislodging the other cubes.6
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Obviously, the problem of having cubes shifting within a larger box could be solved
27 without the use of a tray—either by making the cubes larger, or by making the outer
box smaller, so the cubes are packed snug within the outer box. However, such a design
28 would significantly hinder the user’s ability to remove an individual cube from the outer
Continued on the next page
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1 In short, a tray with wells is clearly functional in the context of a candy box containing
2 multiple units. Plaintiff cannot obtain a monopoly on such a useful design.
3 The Complaint makes no effort whatsoever to explain how its alleged trade dress
4 is non-functional. Rather, Plaintiff alleges only that “there exist wide and varied ways to
5 design packaging that contains gifts and candy.” [Complaint ¶ 37]. Plaintiff asserts that
6 Defendants “are not unduly impeded from engaging in their own design and
7 presentation of their products, so long as they do not steal from the Sugarfina Trade
8 Dress.” [Id.]. These are not factual allegations that must be accepted as true, but mere
9 legal conclusions. Furthermore, they are incorrect legal conclusions.
10 First, assuming the truth of Plaintiff’s allegation that Defendants copied its
11 designs, the Supreme Court has made it very clear that “copying is not always
12 discouraged or disfavored.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S.
13 23, 29 (2001). Rather, copying often promotes fair competition and advances in
14 technology. Id. Furthermore, the availability of alternative designs does not render an
15 otherwise functional design element non-functional. Id. (“There is no need . . . to
16 engage . . . in speculation about other design possibilities . . . . Here, the functionality of
17 the spring design means that competitors need not explore whether other spring
18 juxtapositions might be used.”). Regardless of whether alternative designs are available,
19 Plaintiff simply cannot claim trade dress rights in any feature for which “exclusive use .
20 . . would put competitors at a significant non-reputation-related disadvantage.” Id. at 32
21 (quoting Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995)).
22 As explained above, each of the elements of Plaintiff’s alleged trade dress
23 contributes to the functionality of the product, and granting Plaintiff exclusive rights to
24 those elements would put competitors such as Bouquet Bar at a disadvantage that has
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26 Continued from the previous page
box. The user would have to invert the entire box in order to get the desired cube to
27 slide out, while also trying to block the other cubes from sliding out at the same time.
Obviously, a spacer—such as a welled tray—is the most functional way to both keep
28 the cube in place and make it easily accessible.
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1 nothing to do with reputation. Therefore, the design of Plaintiff’s candy boxes cannot be
2 protected as trade dress. Plaintiff’s first and second causes of action must be dismissed
3 with prejudice.
4 B. The Complaint fails to state a claim for patent infringement
5 Plaintiff’s claim for infringement of its design patent is likewise barred.
6 Assuming for the sake of argument that the design patent is valid, no reasonable finder
7 of fact could conclude that Defendants infringed the patent. Therefore, this claim must
8 be dismissed with prejudice.
9 Unlike utility patents, “‘[d]esign patents have almost no scope’ and are ‘limited
10 to what is shown in the application drawings.’” Razer Auto, Inc. v. Omix-ADA, Inc., No.
11 SACV-16-00300-AGS-PX, 2016 WL 6678008, at *2 (C.D. Cal. Apr. 20, 2016)
12 (quoting Times Three Clothier, LLC v. Spanx, Inc., 2014 WL 1688130, at *2 (S.D.N.Y.
13 Apr. 29, 2014). Design patent protection extends only to “the novel, ornamental features
14 of the patented design,” not the functional elements. OddzOn Prods., Inc. v. Just Toys,
15 Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). And when a patented design contains both
16 functional and non-functional elements, the Court must construe the scope of the claim
17 “to identify the non-functional aspects of the design as shown in the patent.” Egyptian
18 Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008). Thus, the protection
19 for design patents such as the one at issue in this case is extremely narrow.
20 After construing the patent to filter out functional elements, the Court must
21 determine whether the articles are substantially identical—that is, whether in the eyes of
22 an ordinary observer “the resemblance is such as to deceive such an observer, inducing
23 him to purchase one supposing it to be the other.” Gorham Mfg. Co. v. White, 81 U.S.
24 511, 528 (1871). This hypothetical “ordinary observer” must be assumed to be familiar
25 with the prior art, so as to enable her to filter out of the analysis any similarities of
26 elements in the public domain. See Egyptian Goddess, 543 F.3d at 683.
27 Here, the product for which Plaintiff claims patent protection is depicted in the
28 illustrations below:
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15 The design can be described as consisting of a rectangular five-sided box, open at
16 the top, with a pull-loop placed in the center of the top edge of one of the box ends (the
17 “Inner Box”). The Inner Box contains two transparent lidded cubic boxes (the “Cubes”)
18 and a tray with two wells. The Cubes are equal to each other in size, with each edge
19 approximately equal to the depth of the Inner Box so that when they rest on the bottom
20 of that box the top of each Cube is approximately the same height as the Inner Box’s
21 opening. The tray wells space the Cubes evenly both from each other and from the walls
22 of the Inner Box. The Inner Box slides laterally into another, slightly larger, rectangular
23 five-sided box, which is open at the end (the “Outer Box”). The Inner Box is kept in
24 place within the Outer Box by friction, and may be removed by using the pull-loop. The
25 broken lines in the patent figures indicate that Plaintiff does not claim (1) the spacer
26 tray, (2) the Outer Box, or (3) the band closures for each Cube lid as part of the patent.
27 In construing the patent, it should be noted that several elements of the patented
28 design are clearly functional. The disclaimed tray element serves the function of
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1 securing the cubes within the Inner Box while allowing for empty space surrounding
2 each Cube. The Outer Box—also disclaimed—serves the function of a lid for the Inner
3 Box. And the disclaimed band closure element serves the function of securing the lid of
4 each Cube. The pull-loop is functional in that it allows for ease of separation in the
5 otherwise tightly fitting Inner and Outer Boxes. As explained above, the transparency of
6 the Cubes is functional in the context for which they are used, because they allow the
7 consumer to see the contents of the cube (from all six sides) without removing the lid.
8 When these functional elements are filtered out, the scope of the patent is extremely
9 narrow.
10 Comparing the patented design with the accused design, the differences between
11 them are readily apparent. The patented design consists of an inner box that slides in
12 and out of an outer box by use of a pull-loop. By contrast, Defendants’ packaging
13 consists of a rectangular box with a beveled top edge so as to make the lid flush with the
14 exterior sides of the box. [See Complaint ¶ 77]. While Defendants’ rectangular box
15 contains two plastic lidded cubic boxes, those boxes are not transparent (as disclosed in
16 the patent), but instead match the color of the rectangular box. [Id.]. Only the lid of each
17 cube is transparent. [Id.]. Furthermore, compared to the Plaintiff’s product, the cubes in
18 Defendants’ boxes are much larger relative to the box they are contained in. Finally,
19 while both the patented design and the accused design incorporate a spacer tray, that
20 similarity must be disregarded based on the fact that it does not make up part of the
21 patent. A graphic comparison of Plaintiff’s patent with Defendants’ product is set forth
22 below:
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BOU04-01:2277221_1:9-10-18 - 10 -
#:184
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20 When the two products are compared as a whole, no reasonable ordinary observer
21 could conclude that they are substantially identical. On the contrary, the designs are
22 substantially different in significant ways. No one seeing Defendants’ lidded box could
23 be deceived into mistaking it for a sliding box. The claim for infringement of the design
24 patent must, therefore, be dismissed with prejudice.
25 C. The Complaint fails to state a claim for copyright infringement
26 Finally, Plaintiff’s claim for copyright infringement must also be dismissed. The
27 Complaint does not allege facts to support a finding of copyright infringement.

28
BOU04-01:2277221_1:9-10-18 - 11 -
#:185
1 1. The registered copyrights are for photos and drawings of

2 Plaintiff’s boxes—not the boxes themselves
3 As an initial matter, the Court must disregard Plaintiff’s legal conclusion that its
4 copyright registrations “cover the use of the candy cubes, the spaced cube arrangement,
5 the spaced cube receiving wells, and the distinctive use of a box to hold the clear
6 cubes.” [Complaint ¶ 42]. This conclusion is contradicted both by the registration
7 certificates themselves, and by longstanding authority. In particular, Plaintiff registered
8 two works of “visual art,” which are described as “2-D artwork” created by Rosie
9 Colleen O’Neill. [Complaint Exhs. 2, 3]. With respect to “Sugarfina Bento Box Open
10 View 1,” this 2-D artwork consists of the following elements:
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BOU04-01:2277221_1:9-10-18 - 12 -
#:186
1
Description Image
2
A graphic consisting of a blue square
3
containing a 3x3 grid with eight smaller
4
squares and the words “hello sugar” in
5
cursive script. The eight squares feature a
6
pattern of overlapping medallions.
7
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an image of a blue square containing the
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word sugarfina® and a candelabra design,
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contained within a white square border
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A photograph of a closed box
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Two photographs of an open box
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25 The other work, “Sugarfina Slider Box Open,” consists of three close-cropped
26 photographs of a blue rectangular box featuring the word “sugarfina®” within a white
27 rectangular border. Two of the photographs are in a perspective view (albeit from
28 different angles), and the third is an elevation view of the end of the box.
BOU04-01:2277221_1:9-10-18 - 13 -
#:187
1
“Sugarfina Slider Box Open”
2
Image 1 Image 2 Image 3
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15 These registrations are for 2-D artwork—i.e., photographs of boxes and
16 drawings. Sugarfina did not register any 3-D sculptural work—i.e., the boxes
17 themselves. This fact is significant; an application to register three-dimensional
18 sculptural works would almost certainly have been refused on the grounds that candy
19 boxes fall outside the subject matter of copyright. Under the Copyright Act, works of
20 copyrightable authorship include “pictorial, graphic, and sculptural works,” 17 U.S.C. §
21 102(a)(5). That term is defined to include “works of artistic craftsmanship,” but only
22 insofar as their form but not their mechanical or utilitarian aspects are
23 concerned; the design of a useful article, as defined in this section, shall be
24 considered a pictorial, graphic, or sculptural work only if, and only to the
25 extent that, such design incorporates pictorial, graphic, or sculptural
26 features that can be identified separately from, and are capable of existing
27 independently of, the utilitarian aspects of the article.
28
BOU04-01:2277221_1:9-10-18 - 14 -
#:188
1 17 U.S.C. §101 (emphasis added). The term “useful article” refers to “an article having
2 an intrinsic utilitarian function that is not merely to portray the appearance of the article
3 or to convey information.” Id.
4 There can be no doubt that Plaintiff’s boxes are “useful articles” as that term is
5 used in the Copyright Act. They have the “intrinsic utilitarian function” of holding
6 candies and other objects. Therefore, had Plaintiff applied to register the boxes
7 themselves as three-dimensional sculptural works—rather than simply two-dimensional
8 photographs and/or drawings—the Copyright Office would have refused registration
9 except to the extent they incorporate any “pictorial, graphic, or sculptural features that
10 can be identified separately from, and are capable of existing independently of, the
11 utilitarian aspects of the [box].” 17 U.S.C. § 101. Reviewing the images shown in the
12 complaint, the boxes contain no such pictorial or sculptural features. There are some
13 graphic features that can be identified separately from the utilitarian aspects of the box,
14 including the overlapping medallion pattern and the candelabra design. These graphic
15 features are also capable of existing independently of the utilitarian aspect of a box.
16 Therefore, had Sugarfina applied to register the boxes themselves, the registration
17 would have been limited to these graphic features.
18 Of course, as noted above Sugarfina did not apply to register the boxes
19 themselves, and the Copyright Office did not register the copyrights as such. Rather,
20 Plaintiff registered its copyrights for images of the boxes. There is no bar to copyright
21 registration for a pictorial or graphic work that portrays a useful article. For example,
22 the Ninth Circuit confirmed that a photograph of a vodka bottle enjoyed a valid (albeit
23 thin) copyright, while the design of the vodka bottle itself did not. See Ets-Hokin v. Skyy
24 Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000) (“[W]e conclude that Ets–Hokin's
25 product shots of the Skyy vodka bottle are original works of authorship entitled to
26 copyright protection.”); id. at 1080 (“[W]e conclude that the bottle has no ‘artistic
27 features [that] can be identified separately and [that] are capable of existing
28 independently as a work of art.’”) (quoting Fabrica Inc. v. El Dorado Corp., 697 F.2d
BOU04-01:2277221_1:9-10-18 - 15 -
#:189
1 890, 893 (9th Cir. 1983)). However, the Copyright Office advises applicants in no
2 uncertain terms of the limited nature of such a copyright:
3 Copyright in a work that portrays a useful article extends only to the artistic
4 expression of the author of the pictorial, graphic, or sculptural work. It does
5 not extend to the design of the article that is portrayed. For example, a
6 drawing or photograph of an automobile or a dress design may be
7 copyrighted, but that does not give the artist or photographer the exclusive
8 right to make automobiles or dresses of the same design.
9 United States Copyright Office Circular 40, Copyright Registration for Pictorial,
10 Graphic and Sculptural Works, at 2-3, available at www.copyright.gov/circs/circ40.pdf
11 (emphasis added).
12 As in Ets-Hokin, Plaintiff’s copyright registrations extend only to the
13 photographs and/or drawings of Plaintiff’s candy boxes. They do not extend to the
14 boxes themselves. Similar to a vodka bottle, the boxes cannot be protected by copyright
15 except to the extent they feature graphics that can be identified separately and are
16 capable of existing independently of the boxes.
17 2. The Complaint does not identify any works that are similar to
18 the registered photographs
19 In order to state a plausible claim for copyright infringement, Plaintiff must
20 allege facts showing that Defendants copied the registered photographs/drawings of its
21 boxes. The Complaint, however, offers no such allegations. Rather, it alleges only that
22 Defendants sold gift boxes featuring some of the same utilitarian features of the boxes
23 portrayed in its copyrighted photographs. As explained above, the registrations are not
24 for the design of the boxes, and Plaintiff cannot own a valid copyright for those designs.
25 Therefore, Plaintiff’s claim for copyright infringement must be dismissed with
26 prejudice.
27
28
BOU04-01:2277221_1:9-10-18 - 16 -
#:190
1 IV. CONCLUSION
2 As explained in detail above, the Complaint fails to allege facts sufficient to state
3 any plausible claim for relief. There are no allegations to support a finding that the
4 alleged trade dress is not functional, and an analysis of the alleged trade dress elements
5 confirms that they are, in fact, functional. With respect to the patent, after filtering out
6 the functional elements and comparing the products, no reasonable jury could conclude
7 that Defendants’ product infringes the patent. Finally, Plaintiffs’ attempt to expand the
8 protection afforded by its copyright registrations must be rejected. Plaintiff may enjoy
9 copyright protection for its overlapping medallion graphic, and for its photographs
10 depicting candy boxes. But as a matter of law the copyright “does not extend to the
11 design of the [box] that is portrayed.” U.S. Copyright Office Circular 40, supra.
12 Assuming the truth of Plaintiff’s allegations, no reasonable jury could find that
13 Defendants infringed Plaintiff’s copyrights.
14 Moreover, the foregoing defects in Plaintiff’s complaint cannot be cured by
15 amendment. With respect to the trade dress/unfair competition claims, there is no
16 element of the alleged trade dress that could be deemed non-functional. As for the
17 patent and copyright claims, no amendment will change the fact that the items at issue
18 are simply not similar in any meaningful way. As such, the Complaint must be
19 dismissed in its entirety, and with prejudice.
20
Samuel G. Brooks
23
24
25 Samuel G. Brooks
27
28
BOU04-01:2277221_1:9-10-18 - 17 -
2 Samuel G. Brooks
CALL & JENSEN
6 Tel: (949) 717-3000
Fax: (949) 717-3100
7
8
9
12
13
14 corporation,
REQUEST FOR JUDICIAL NOTICE
15 Plaintiff, IN SUPPORT OF DEFENDANTS’
MOTION TO DISMISS
16 vs.
17
BOUQUET BAR, INC., a Delaware Date: October 15, 2018
18 corporation; BOUQUET BAR, LLC, a Time: 1:30 PM
Wyoming limited liability company; Place: 411 W. Fourth St.
19 DAVID (DAOUD) YUSUF, an individual; Santa Ana, CA 92701
20 ALEX AMIDI, an individual; JEFFREY Courtroom 9B
MATSEN, an individual; and SAL AZIZ, Judicial Officer: Hon. Cormac J. Carney
21 an individual,
22 Defendants.
23
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26
27
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BOU04-01:2290091_1:9-10-18 -1-
REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS
1 Defendants Bouquet Bar, Inc., Bouquet Bar, LLC, David Yusuf, Alex Amidi, and Sal
2 Aziz (“Moving Defendants”) request that the Court take judicial notice pursuant to Rule
3 201 of the Federal Rules of Evidence of the following facts in support of their motion to
4 dismiss the Complaint:
5 1. On August 2, 2014, Sugarfina, LLC applied to register a trademark for the color
6 “swimming pool blue, Pantone PMS 310-C,” applied to the sides of the
7 packaging of goods, Serial Number 86355764. This fact can be accurately and
8 readily determined by reference to the application for registration on file with the
9 United States Patent and Trademark Office (USPTO) in connection with Serial
10 Number 86355764. A copy of the application—including the drawing and
11 specimen—is attached hereto as Exhibit 1.
12 2. On November 20, 2014, the USPTO refused Sugarfina’s application to register
13 “swimming pool blue” as a trademark on the Principle Register on the grounds
14 that secondary meaning was not established. This fact can be accurately and
15 readily determined by reference to the Office Action on file with the USPTO in
16 connection with Serial Number 86355764. A copy of the Office Action is
17 attached hereto as Exhibit 2.
18 3. Rather than attempt to prove that the shade of blue had acquired secondary
19 meaning, Sugarfina authorized an amendment to the application to seek
20 registration on the Supplemental Register, rather than the Principal Register. This
21 fact can be accurately and readily determined by reference to the Examiner’s
22 Amendment dated November 21, 2014, on file with the USPTO in connection
23 with Serial Number 86355764. A copy of the Examiner’s Amendment is attached
24 hereto as Exhibit 3.
25 4. Tiffany (NJ) LLC (as successor to Tiffany & Co.) is the owner of a registered
26 trademark for a color described as “robin egg blue.” This fact can be accurately
27 and readily determined by reference to the registration certificate for USPTO
28 Registration Number 2,359,351 (dated June 20, 2000), and the specimen
BOU04-01:2290091_1:9-10-18 -2-
1 submitted in connection with the maintenance of this registration (dated June 11,
2 2010). A copy of the registration and specimen are attached hereto as Exhibits 4
3 and 5, respectively.
4 5. Sugarfina has applied to register the design of its clear plastic cubes as trade dress
5 via two applications, Serial Numbers 87586901 and 87586905. This fact can be
6 accurately and readily determined by reference to the applications for trademark
7 registration, both dated August 28, 2017, on file with the USPTO in connection
8 with the foregoing serial numbers. Copies of the applications are attached hereto
9 as Exhibits 6 and 7, respectively.
10 6. Both of Sugarfina’s applications to register the design of its clear plastic cubes as
11 trade dress have been finally refused on the grounds that a “cube-shaped, clear
12 box is a common design for candy packaging that is not unique and would not be
13 capable of creating a commercial impression.” This fact can be accurately and
14 readily determined by reference to the Office Actions, both dated June 22, 2018,
15 on file with the USPTO in connection with Serial Numbers 87586901 and
16 87586905. Copies of the Office Actions are attached hereto as Exhibits 8 and 9,
17 respectively.
18
Samuel G. Brooks
21
22
23 Samuel G. Brooks
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BOU04-01:2290091_1:9-10-18 -3-
EXHIBIT 1
PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)
Trademark/Service Mark Application, Principal Register

Serial Number: 86355764
Filing Date: 08/02/2014
The table below presents the data as entered.
Input Field Entered

SERIAL NUMBER 86355764
MARK INFORMATION
\\TICRS\EXPORT16\IMAGEOUT 16\863\557\86355764\xml1\
*MARK
APP0002.JPG
SPECIAL FORM YES
USPTO-GENERATED IMAGE NO
COLOR MARK YES
COLOR(S) CLAIMED The color(s) swimming pool blue, Pantone PMS 310-C is/are claimed as a
(If applicable) feature of the mark.
The mark consists of the color swimming pool blue, Pantone PMS 310-C,
*DESCRIPTION OF THE MARK applied to the sides of the packaging of the goods. The dotted lines outlining
(and Color Location, if applicable) the packaging indicate placement of the mark on the goods and are not part of
the mark.
PIXEL COUNT ACCEPTABLE YES
PIXEL COUNT 567 x 399
REGISTER Principal
APPLICANT INFORMATION
*OWNER OF MARK Sugarfina, LLC
*STREET 1611 Old Oak Road
*CITY Los Angeles
*STATE
California
(Required for U.S. applicants)
*COUNTRY United States

*ZIP/POSTAL CODE
90049
(Required for U.S. applicants only)
LEGAL ENTITY INFORMATION

TYPE limited liability company
STATE/COUNTRY WHERE LEGALLY
California
ORGANIZED
GOODS AND/OR SERVICES AND BASIS INFORMATION

INTERNATIONAL CLASS 030
Candies; Candy; Candy containing alcoholic beverage content and flavor;
Candy for food; Candy with caramel; Candy with cocoa; Chocolate candies;
*IDENTIFICATION Chocolate confections; Chocolates and chocolate based ready to eat candies
and snacks; Fruit jelly candy; Gift baskets containing candy; Gummy candies;
Sugarless candies; Sweets.

FILING BASIS SECTION 1(a)
FIRST USE ANYWHERE DATE At least as early as 07/31/2012
FIRST USE IN COMMERCE DATE At least as early as 10/26/2012
SPECIMEN FILE NAME(S)
ORIGINAL PDF FILE SPE0-76196197121-160945405_._slider_box_specimen.pdf

CONVERTED PDF FILE(S)
\\TICRS\EXPORT16\IMAGEOUT16\863\557\86355764\xml1\APP0003.JPG
(1 page)
SPECIMEN DESCRIPTION picture of slider box.

ATTORNEY INFORMATION
NAME Paul D. Chancellor
ATTORNEY DOCKET NUMBER OTM-14011
FIRM NAME Ocean Law
STREET 3463 red bluff ct
CITY Simi Valley
STATE California
COUNTRY United States
ZIP/POSTAL CODE 93063
PHONE 8053684586
FAX 805.299.4919
EMAIL ADDRESS pdc@oceanlawgroup.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
CORRESPONDENCE INFORMATION
NAME Paul D. Chancellor
FIRM NAME Ocean Law
STREET 3463 red bluff ct
CITY Simi Valley
STATE California
PHONE 8053684586
FAX 805.299.4919
EMAIL ADDRESS pdc@oceanlawgroup.com
FEE INFORMATION
NUMBER OF CLASSES 1
FEE PER CLASS 325
*TOTAL FEE DUE 325
*TOTAL FEE PAID 325

SIGNATURE INFORMATION
SIGNATURE /paul d. chancellor/
SIGNATORY'S NAME Paul D. Chancellor
SIGNATORY'S POSITION Attorney of record, CA bar member
DATE SIGNED 08/02/2014
PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)

To the Commissioner for Trademarks:
MARK: (Stylized and/or Design, see mark)
The color(s) swimming pool blue, Pantone PMS 310-C is/are claimed as a feature of the mark. The mark consists of the color swimming pool
blue, Pantone PMS 310-C, applied to the sides of the packaging of the goods. The dotted lines outlining the packaging indicate placement of the
mark on the goods and are not part of the mark.
The applicant, Sugarfina, LLC, a limited liability company legally organized under the laws of California, having an address of
1611 Old Oak Road
Los Angeles, California 90049
United States
requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
International Class 030: Candies; Candy; Candy containing alcoholic beverage content and flavor; Candy for food; Candy with caramel;
Candy with cocoa; Chocolate candies; Chocolate confections; Chocolates and chocolate based ready to eat candies and snacks; Fruit jelly candy;
Gift baskets containing candy; Gummy candies; Sugarless candies; Sweets.
In International Class 030, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at
least as early as 07/31/2012, and first used in commerce at least as early as 10/26/2012, and is now in use in such commerce. The applicant is
submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or
services, consisting of a(n) picture of slider box..
Original PDF file:

SPE0-76196197121-160945405_._slider_box_specimen.pdf
Converted PDF file(s) (1 page)
Specimen File1
The applicant's current Attorney Information:

Paul D. Chancellor of Ocean Law
3463 red bluff ct
Simi Valley, California 93063
United States
The attorney docket/reference number is OTM-14011.
The applicant's current Correspondence Information:

Paul D. Chancellor
Ocean Law
3463 red bluff ct
Simi Valley, California 93063
8053684586(phone)
805.299.4919(fax)
pdc@oceanlawgroup.com (authorized)
A fee payment in the amount of $325 has been submitted with the application, representing payment for 1 class(es).
Declaration
The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the
trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce on or
in connection with the goods/services in the application, and such use by the applicant's related company or licensee inures to the benefit of the
applicant; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an
application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the
applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection
with the goods/services in the application. The signatory believes that to the best of the signatory's knowledge and belief, no other person has the
right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
goods/services of such other person, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and
the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may
jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are
true and all statements made on information and belief are believed to be true.
Declaration Signature
Signature: /paul d. chancellor/ Date: 08/02/2014

Signatory's Name: Paul D. Chancellor
Signatory's Position: Attorney of record, CA bar member
RAM Sale Number: 86355764
RAM Accounting Date: 08/04/2014

Internet Transmission Date: Sat Aug 02 16:47:07 EDT 2014
TEAS Stamp: USPTO/BAS-XX.XXX.XXX.XXX-201408021647076
99105-86355764-5007057287d15ee18fc33a1ab
53e676108e58ba7fee9385d295d71802d2c1b21-
CC-6210-20140802160945405135
EXHIBIT 2
#:203
To: Sugarfina, LLC (pdc@oceanlawgroup.com)

Subject: U.S. TRADEMARK APPLICATION NO. 86355764 - OTM-14011
Sent: 11/20/2014 4:37:15 PM
Sent As: ECOM114@USPTO.GOV
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4
Attachment - 5
Attachment - 6
Attachment - 7
Attachment - 8
Attachment - 9
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86355764
MARK:
*86355764*
CORRESPONDENT ADDRESS:
PAUL D. CHANCELLOR CLICK HERE TO RESPOND TO THIS LETTER:
Ocean Law http://www.uspto.gov/trademarks/teas/response_forms.jsp
3463 Red Bluff Ct
Simi Valley, CA 93063-5783 VIEW YOUR APPLICATION FILE
APPLICANT: Sugarfina, LLC
CORRESPONDENT’S REFERENCE/DOCKET NO :
OTM-14011
CORRESPONDENT E-MAIL ADDRESS:
pdc@oceanlawgroup.com
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 11/20/2014
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to
the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Summary of Issues
#:204
• Sections 1, 2 and 45 Color Refusal
• Request for Information—Color
• Color Description of the Mark
Sections 1, 2 and 45 Color Refusal
Registration is refused because the applied-for color mark, consisting of one or more colors used on some or all of the surfaces of a product or
product packaging, is not inherently distinctive. Such marks are registrable only on the Supplemental Register or on the Principal Register with
sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see Qualitex Co. v. Jacobson
Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed.
Cir. 1985); cf. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000).
In this case, the proposed mark consists of the color blue as applied to the goods. The attached evidence from Google® shows a list of many
candy boxes in various colors. Potential purchasers do not initially view such use of color as a trademark for the goods but as ornamentation.
Color marks are never inherently distinctive and can only be registered on the Supplemental Register or on the Principal Register with sufficient
proof of acquired distinctiveness. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995); In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985); cf. Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000).
Accordingly, the mark is refused registration on the Principal Register.
Suggest Amendment to Supplemental Register

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and
arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091;
37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting
evidence and arguments against the refusal(s). TMEP §816.04.
Request for Information—Color
To permit proper examination of the applied-for color mark, applicant must provide the following information and documentation:
(1) An explanation as to whether the identified color(s) serve(s) any purpose as used on the goods
(2) An explanation as to whether the identified color(s) is/are a natural by-product of the manufacturing process for the goods
(3) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates
specifically to the applied-for color mark
(4) An explanation as to whether any statutes, regulations, ordinances, codes or industry standards require, regulate and/or standardize the
use of the identified color(s) on the goods
(5) An explanation as to the use of the identified color(s) in applicant’s industry and any other similar use of color in applicant’s
industry
(6) An explanation describing any other similar use of color by applicant
(7) An explanation as to whether competitors produce the goods in the identified color(s) and in color(s) other than the identified color(s)
(8) Color photographs and color advertisements showing competitive goods in applicant’s industry
See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB
2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI
P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
Color Description of the Mark
Applicant must submit an accurate and concise description of the literal and design elements in the mark. 37 C.F.R. §2.37; see TMEP §§808.01,
808.02.
#:205
Applicant must submit the following:
The mark consists of the color swimming pool blue, Pantone PMS 310-C, applied to the sides of the packaging of the goods, excluding the end
portions. The dotted lines outlining the packaging indicate placement of the mark on the goods and are not part of the mark.
Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).
/William T. Verhosek/
William T. Verhosek
Examining Attorney
USPTO/Law Office 114
571-272-9464
william.verhosek@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the
issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.
For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned
trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an
applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the
response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or
official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR)
system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact
the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on
checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

#:206
#:207
#:208
#:209
#:210
#:211
#:212
#:213
#:214
#:215

Sent: 11/20/2014 4:37:16 PM
Attachments:
IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION
USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/20/2014 FOR U.S. APPLICATION SERIAL NO. 86355764
Please follow the instructions below:
(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
“Documents.”
The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
hours of this e-mail notification.
(2) TIMELY RESPONSE IS REQUIRED: Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
response time period. Your response deadline will be calculated from 11/20/2014 (or sooner if specified in the Office action). For information
regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
responses to Office actions. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System
(TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.
(3) QUESTIONS: For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney. For
technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
TSDR@uspto.gov.
WARNING
Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application. For
more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private companies not associated with the USPTO are
using information provided in trademark applications to mail or e-mail trademark-related solicitations. These companies often use names that
closely resemble the USPTO and their solicitations may look like an official government document. Many solicitations require that you pay
“fees.”
Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
from the USPTO rather than a private company solicitation. All official USPTO correspondence will be mailed only from the “United States
Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.” For more information on how to handle
private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
#:216
EXHIBIT 3
#:217

Sent: 11/21/2014 3:45:27 PM
Attachments:

U.S. APPLICATION SERIAL NO. 86355764
MARK:
*86355764*
CORRESPONDENT ADDRESS:
PAUL D. CHANCELLOR CLICK HERE TO RESPOND TO THIS LETTER:
Ocean Law http://www.uspto.gov/trademarks/index.jsp
3463 Red Bluff Ct
Simi Valley, CA 93063-5783 VIEW YOUR APPLICATION FILE
APPLICANT: Sugarfina, LLC
CORRESPONDENT’S REFERENCE/DOCKET NO :
OTM-14011
CORRESPONDENT E-MAIL ADDRESS:
pdc@oceanlawgroup.com
EXAMINER’S AMENDMENT
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has
found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by PAUL D. CHANCELLOR on November 21, 2014,
the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections.
Otherwise, no response is necessary. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the
goods and/or services, but may not add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.
AMENDMENT TO SUPPLEMENTAL REGISTER
The application is amended to the Supplemental Register.
DESCRIPTION OF THE MARK
The following description of the mark is added to the record:
The mark consists of the color swimming pool blue, Pantone PMS 310-C, applied to the sides of the packaging of the goods, excluding the end
portions. The dotted lines outlining the packaging indicate placement of the mark on the goods and are not part of the mark.
See 37 C.F.R. §2.37; TMEP §§808 et seq.
/William T. Verhosek/
#:218
William T. Verhosek
Examining Attorney
USPTO/Law Office 114
571-272-9464
william.verhosek@uspto.gov
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or
official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR)
system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact
the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on
checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at
http://www.uspto.gov/trademarks/teas/correspondence.jsp.
#:219

Sent: 11/21/2014 3:45:28 PM
Attachments:


ON 11/21/2014 FOR U.S. APPLICATION SERIAL NO.86355764
(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov/, enter the U.S. application serial number, and click on
“Documents.”
TSDR@uspto.gov.
WARNING
“fees.”
#:220
EXHIBIT 4
#:221
#:222
#:223
EXHIBIT 5
#:224
#:225
#:226
#:227
#:228
#:229
#:230
#:231
#:232
#:233
#:234
#:235
EXHIBIT 6
#:236
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2018)

Input Field Entered

MARK INFORMATION
\\TICRS\EXPORT17\IMAGEOUT
*MARK
17\875\869\87586901\xml1\ RFA0002.JPG
SPECIAL FORM YES
COLOR MARK NO
The mark consists of a three-dimensional configuration
comprised of a clear cube partially wrapped with a stripe-like
*DESCRIPTION OF THE MARK element that bulges on the top to a circular shape and tapers on
(and Color Location, if applicable) the front to a point, where the hatched stippling on the
configuration's sides is to show that the product is clear and is
not part of the claim.
REGISTER Principal
*OWNER OF MARK Sugarfina, Inc.
*STREET 3915 West 102nd Street
*CITY Inglewood
*STATE
California

*ZIP/POSTAL CODE
90303
(Required for U.S. and certain international addresses)

TYPE corporation
STATE/COUNTRY OF INCORPORATION Delaware
Candies; Candy; Candy containing alcoholic beverage content
and flavor; Candy for food; Candy with caramel; Candy with
cocoa; Chocolate candies; Chocolate confections; Chocolates
*IDENTIFICATION
and chocolate based ready to eat candies and snacks; Fruit jelly
#:237
candy; Gift baskets containing candy; Gummy candies;
Sugarless candies; Sweets
17\875\869\87586901\xml1\ RFA0003.JPG
17\875\869\87586901\xml1\ RFA0004.JPG
SPECIMEN DESCRIPTION pictures of decorative product packagining
NAME Austin Padgett
ATTORNEY DOCKET NUMBER 251566.188
FIRM NAME Troutman Sanders LLP
STREET 600 Peachtree St. NE, Suite 5200
CITY Atlanta
STATE Georgia
PHONE 404-885-3155
FAX 4048853900
EMAIL ADDRESS trademarks@troutmansanders.com
NAME Austin Padgett
CITY Atlanta
STATE Georgia
PHONE 404-885-3155
FAX 4048853900
trademarks@troutmansanders.com;
*EMAIL ADDRESS
austin.padgett@troutmansanders.com
*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
FEE INFORMATION
APPLICATION FILING OPTION TEAS RF
NUMBER OF CLASSES 1
#:238
APPLICATION FOR REGISTRATION PER CLASS 275
*TOTAL FEE DUE 275
*TOTAL FEE PAID 275
SIGNATURE /LanceMiller/
SIGNATORY'S NAME Lance Miller
SIGNATORY'S POSITION Secretary
SIGNATORY'S PHONE NUMBER 000-000-0000
#:239
PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2018)

The mark consists of a three-dimensional configuration comprised of a clear cube partially wrapped with a stripe-like element that bulges on the
top to a circular shape and tapers on the front to a point, where the hatched stippling on the configuration's sides is to show that the product is
clear and is not part of the claim.
The applicant, Sugarfina, Inc., a corporation of Delaware, having an address of
3915 West 102nd Street
Inglewood, California 90303
United States
Gift baskets containing candy; Gummy candies; Sugarless candies; Sweets
submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
goods/services, consisting of a(n) pictures of decorative product packagining.
Specimen File1
Specimen File2

Austin Padgett of Troutman Sanders LLP 600 Peachtree St. NE, Suite 5200
Atlanta, Georgia 30308
United States
404-885-3155(phone)
4048853900(fax)
trademarks@troutmansanders.com (authorized)
The attorney docket/reference number is 251566.188.

Austin Padgett
Troutman Sanders LLP
600 Peachtree St. NE, Suite 5200
404-885-3155(phone)
4048853900(fax)
trademarks@troutmansanders.com;austin.padgett@troutmansanders.com (authorized)
E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant, the applicant's
attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address
must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the
Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Reduced Fee status and a requirement to
submit an additional processing fee of $125 per international class of goods/services.
#:240
Declaration
Basis:
If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):
The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;
The mark is in use in commerce on or in connection with the goods/services in the application;
The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and
To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
And/Or
If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),
and/or § 1126(e):
The signatory believes that the applicant is entitled to use the mark in commerce;
The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the
application; and
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the
mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
goods/services of such other persons, to cause confusion or mistake, or to deceive.
To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the
allegations and other factual contentions made above have evidentiary support.
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §
1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration
resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and
belief are believed to be true.
Signature: /LanceMiller/ Date: 08/28/2017

Signatory's Name: Lance Miller
Signatory's Position: Secretary
Payment Sale Number: 87586901
Payment Accounting Date: 08/29/2017

Internet Transmission Date: Mon Aug 28 19:42:13 EDT 2017
TEAS Stamp: USPTO/BAS-XXX.XX.XX.X-201708281942133190
68-87586901-5101863eb2cf7d1d2e71f9362de0
d69d10ec381245706e6f3b70c33eb19235-DA-67
86-20170828164905841696
#:241
#:242
#:243
#:244
EXHIBIT 7
#:245
PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2018)

Input Field Entered

MARK INFORMATION
*MARK
17\875\869\87586905\xml1\ RFA0002.JPG
SPECIAL FORM YES
COLOR MARK NO
The mark consists of a three-dimensional configuration
comprised of a clear cube partially wrapped with a stripe-like
*DESCRIPTION OF THE MARK element that bulges on the top to a diamond shape and tapers
(and Color Location, if applicable) on the front to a point, where the hatched stippling on the
configuration's sides is to show that the product is clear and is
not part of the claim.
REGISTER Principal
*OWNER OF MARK Sugarfina, Inc.
*STREET 3915 West 102nd Street
*CITY Inglewood
*STATE
California

*ZIP/POSTAL CODE
90303
(Required for U.S. and certain international addresses)

TYPE corporation
STATE/COUNTRY OF INCORPORATION Delaware
Candies; Candy; Candy containing alcoholic beverage content
and flavor; Candy for food; Candy with caramel; Candy with
cocoa; Chocolate candies; Chocolate confections; Chocolates
*IDENTIFICATION
and chocolate based ready to eat candies and snacks; Fruit jelly
#:246
candy; Gift baskets containing candy; Gummy candies;
Sugarless candies; Sweets
17\875\869\87586905\xml1\ RFA0003.JPG
17\875\869\87586905\xml1\ RFA0004.JPG
SPECIMEN DESCRIPTION pictures of decorative product packagining
NAME Austin Padgett
ATTORNEY DOCKET NUMBER 251566.189
CITY Atlanta
STATE Georgia
PHONE 404-885-3155
FAX 4048853900
EMAIL ADDRESS trademarks@troutmansanders.com
NAME Austin Padgett
CITY Atlanta
STATE Georgia
PHONE 404-885-3155
FAX 4048853900
trademarks@troutmansanders.com;
*EMAIL ADDRESS
austin.padgett@troutmansanders.com
*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
FEE INFORMATION
APPLICATION FILING OPTION TEAS RF
NUMBER OF CLASSES 1
#:247
APPLICATION FOR REGISTRATION PER CLASS 275
*TOTAL FEE DUE 275
*TOTAL FEE PAID 275
SIGNATURE /LanceMiller/
SIGNATORY'S NAME Lance Miller
SIGNATORY'S POSITION Secretary
SIGNATORY'S PHONE NUMBER 000-000-0000
#:248
PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2018)

The mark consists of a three-dimensional configuration comprised of a clear cube partially wrapped with a stripe-like element that bulges on the
top to a diamond shape and tapers on the front to a point, where the hatched stippling on the configuration's sides is to show that the product is
clear and is not part of the claim.
The applicant, Sugarfina, Inc., a corporation of Delaware, having an address of
3915 West 102nd Street
Inglewood, California 90303
United States
Gift baskets containing candy; Gummy candies; Sugarless candies; Sweets
submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
goods/services, consisting of a(n) pictures of decorative product packagining.
Specimen File1
Specimen File2

Austin Padgett of Troutman Sanders LLP 600 Peachtree St. NE, Suite 5200
United States
404-885-3155(phone)
4048853900(fax)
trademarks@troutmansanders.com (authorized)
The attorney docket/reference number is 251566.189.

Austin Padgett
Troutman Sanders LLP
600 Peachtree St. NE, Suite 5200
404-885-3155(phone)
4048853900(fax)
trademarks@troutmansanders.com;austin.padgett@troutmansanders.com (authorized)
E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant, the applicant's
attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address
must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the
Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Reduced Fee status and a requirement to
submit an additional processing fee of $125 per international class of goods/services.
#:249
Declaration
Basis:
If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):
The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;
The mark is in use in commerce on or in connection with the goods/services in the application;
The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and
And/Or
If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),
and/or § 1126(e):
The signatory believes that the applicant is entitled to use the mark in commerce;
The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the
application; and
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the
mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
goods/services of such other persons, to cause confusion or mistake, or to deceive.
To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the
allegations and other factual contentions made above have evidentiary support.
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §
1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration
resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and
belief are believed to be true.
Signature: /LanceMiller/ Date: 08/28/2017

Signatory's Name: Lance Miller
Signatory's Position: Secretary
Payment Sale Number: 87586905
Payment Accounting Date: 08/29/2017

Internet Transmission Date: Mon Aug 28 19:46:47 EDT 2017
TEAS Stamp: USPTO/BAS-XXX.XX.XX.X-201708281946471415
28-87586905-510642d45312f8e7f337767b5907
31120b54579d83cfd0bf273b629ff78671b0-DA-
6826-20170828170349016422
#:250
#:251
#:252
#:253
EXHIBIT 8
#:254
To: Sugarfina, Inc. (trademarks@troutmansanders.com)

Subject: U.S. TRADEMARK APPLICATION NO. 87586901 - 251566.188
Sent: 6/22/2018 1:07:40 PM
Attachments:

U.S. APPLICATION SERIAL

NO. 87586901
MARK:
*87586901*
CORRESPONDENT
ADDRESS: CLICK HERE TO RESPOND TO THIS
AUSTIN PADGETT LETTER:
TROUTMAN SANDERS http://www.uspto.gov/trademarks/teas/response_forms.jsp
LLP
600 PEACHTREE ST. NE, VIEW YOUR APPLICATION FILE
SUITE 5200
ATLANTA, GA 30308
APPLICANT: Sugarfina, Inc.
CORRESPONDENT’S
REFERENCE/DOCKET NO:
251566.188
CORRESPONDENT E-MAIL
ADDRESS:
trademarks@troutmansanders.com
OFFICE ACTION

COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE
TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
THIS IS A FINAL ACTION.
Introduction
This Office action is in response to applicant’s communication filed on June 1, 2018.
In a previous Office action dated December 1, 2017, the trademark examining attorney refused registration of the applied-for mark based on the
specimen not matching the drawing. The Office action also refused registration because there are nondistinctive incapable elements of
applicant’s product packaging and required an amended drawing and mark description.
Upon due consideration of applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusals and
requirements. See 37 C.F.R. §2.63(b); TMEP §714.04.
#:255
Summary of Issues Made Final that Applicant Must Address:
Specimen Refusal
Nondistinctive Incapable Elements of Product Packaging – Amended Drawing & Mark Description Required
Specimen Refusal
Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce. Trademark Act Sections 1
and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).
Specifically, applicant’s mark description states: “The mark consists of a three-dimensional configuration comprised of a clear cube partially
wrapped with a stripe-like element that bulges on the top to a circular shape and tapers on the front to a point, where the hatched stippling on the
configuration’s sides is to show that the product is clear and is not part of the claim.”
The drawing shows what appears to be a clear box where there is diagonal hatched stippling on all sides (indicating the box is clear). Further,
there is also hatched stippling that is vertical and horizontal on the portion where the label is. The mark description indicates that areas where
there is “hatched stippling” indicates clear areas. The mark description does not reference the “hatched stippling” on the label as being opaque.
Therefore, there is an ambiguity according to the mark description as to whether all areas with hatched stippling indicate clear areas.
The specimen displays the stripe and circle label on the box as being opaque. Therefore, as currently described, the drawing and the specimen do
not match.
The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection
with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a). Because the mark in the drawing is not a
substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for
mark in commerce on or in connection with applicant’s goods and/or services. See TMEP §807.12(a).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each
international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R.
§§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens
for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP
§904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and
billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a new drawing of the mark that agrees with the mark on the specimen and, if appropriate, an amendment to the color claim
and/or mark description that conforms to the new drawing. As discussed below, applicant must amend the drawing and mark
description to indicate that the clear box itself is not claimed as part of the mark. Upon this amendment of the drawing and mark
description, as indicated below, the specimen refusal will be obviated.
(2) Submit a different specimen (a verified “substitute” specimen ) that (a) was in actual use in commerce at least as early as the filing
date of the application or prior to the filing of an amendment to allege use and (b) shows the mark or a substantially exact representation
of the mark in the drawing in actual use in commerce for the goods and/or services identified in the application.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic
Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/J3.jsp.
Applicant should note the following additional ground for refusal.
The drawing of applicant’s applied-for product packaging mark is not acceptable because it depicts in solid lines nondistinctive elements that
are incapable of functioning as a mark. See TMEP §1202.02(c)(i)(B); cf. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58
USPQ2d 1001, 1006 (2001); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). Generally, nondistinctive elements of a product
packaging mark that are incapable of functioning as a mark are unregistrable and thus are required to be shown in broken or dotted lines on the
drawing. See 15 U.S.C. §§1051-1052, 1127; 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A.
1980); TMEP §1202.02(c)(i)(B).
#:256
Specifically, the cube-shaped clear box itself is nondistinctive and incapable of functioning as a mark. The evidence attached to the previous
Office action from a Google Image search shows eleven examples of candy being presented in a clear, cube-shaped box. Thus, a cube-shaped,
clear box is a common design for candy packaging that is not unique and would be not be capable of creating a commercial impression itself
distinct from accompanying words or the stripe and diamond design.
However, the entire mark is not incapable. The stripe and circle label and placement on the box are capable of being registered.
Therefore, applicant must provide (1) a new drawing of the mark showing the nondistinctive elements in broken or dotted lines, and (2) an
amended mark description that references the matter in broken or dotted lines and indicates such matter is not claimed as part of the mark. See
TMEP §1202.02(c)(i)(B), (c)(ii). Applicant must provide the amended drawing regardless of whether the remaining portions of the mark are
determined to be registrable. TMEP §1202.02(c)(i)(B).
The amended drawing should also remove the hatched stippling on the stripe and diamond design since the specimen shows that this
portion is not clear – unless the mark description indicates that the hatched stippling on the label indicates opaque areas.
Applicant may submit the following mark description, if accurate:
The mark consists of a three-dimensional configuration of a clear cube-shaped box with a label across the top of the box
beginning as a stripe, forming a circular shape and culminating back into a stripe that tapers to a pointed end that proceeds down
the front of the box. The hatched stippling on the label indicates that the label is opaque. The hatched stippling on the box
indicates that the cube-shaped box is clear and is not part of the mark. The broken lines depicting the shape of the clear cube-
shaped box indicate placement of the mark on the box and that the box itself is not part of the mark.
See TMEP §1202.02(c)(ii).
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Essentially, applicant argues that the box itself is registrable in addition to the label and its position on the box because the label ties the label and
box together and therefore inseparable. However, the law and evidence discussed above shows that clear box packaging to hold candy is too
common to be registrable in and of itself.
Accordingly, the requirement to amend the drawing and mark description is maintained as final.
Response Options
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C.
§1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements
and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA)
with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee
required for filing a petition. 37 C.F.R. §2.6(a)(15).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application
online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b),
2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
$125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations,
TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without
incurring this additional fee.
#:257
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications
and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email
address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
/Parker Howard/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
571-272-6548
Parker.Howard@uspto.gov
response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official
notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking
status, see http://www.uspto.gov/trademarks/process/status/.

#:258

Sent: 6/22/2018 1:07:42 PM
Attachments:


“Documents.”
response time period. Your response deadline will be calculated from 6/22/2018 (or sooner if specified in the Office action). A response
transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
response period. For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
responses to Office actions. Instead, the USPTO recommends that you respond online using the TEAS response form located at
http://www.uspto.gov/trademarks/teas/response_forms.jsp.
TSDR@uspto.gov.
WARNING
“fees.”
#:259
EXHIBIT 9
#:260

Sent: 6/22/2018 1:08:25 PM
Attachments:

U.S. APPLICATION SERIAL

NO. 87586905
MARK:
*87586905*
CORRESPONDENT
ADDRESS: CLICK HERE TO RESPOND TO THIS
AUSTIN PADGETT LETTER:
TROUTMAN SANDERS http://www.uspto.gov/trademarks/teas/response_forms.jsp
LLP
600 PEACHTREE ST. NE, VIEW YOUR APPLICATION FILE
SUITE 5200
ATLANTA, GA 30308
APPLICANT: Sugarfina, Inc.
CORRESPONDENT’S
REFERENCE/DOCKET NO:
251566.189
CORRESPONDENT E-MAIL
ADDRESS:
trademarks@troutmansanders.com
OFFICE ACTION

COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE
TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
THIS IS A FINAL ACTION.
Introduction
This Office action is in response to applicant’s communication filed on June 1, 2018.
In a previous Office action dated December 1, 2017, the trademark examining attorney refused registration of the applied-for mark based on the
specimen not matching the drawing. The Office action also refused registration because there are nondistinctive incapable elements of
applicant’s product packaging and required an amended drawing and mark description.
Upon due consideration of applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal and
requirements. See 37 C.F.R. §2.63(b); TMEP §714.04.
#:261
Summary of Issues Made Final that Applicant Must Address:
Specimen Refusal
Specimen Refusal
Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce. Trademark Act Sections 1
and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).
Specifically, applicant’s mark description states: “The mark consists of a three-dimensional configuration comprised of a clear cube partially
wrapped with a stripe-like element that bulges on the top to a diamond shape and tapers on the front to a point, where the hatched stippling on the
configuration’s sides is to show that the product is clear and is not part of the claim.”
The drawing shows what appears to be a clear box where there is diagonal hatched stippling on all sides (indicating the box is clear). Further,
there is also hatched stippling that is vertical and horizontal on the portion where the label is. The mark description indicates that areas where
there is “hatched stippling” indicates clear areas. The mark description does not reference the “hatched stippling” on the label as being opaque.
Therefore, there is an ambiguity according to the mark description as to whether all areas with hatched stippling indicate clear areas.
The specimen displays the stripe and diamond label on the box as being opaque. Therefore, as currently described, the drawing and the specimen
do not match.
The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection
with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a). Because the mark in the drawing is not a
substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for
mark in commerce on or in connection with applicant’s goods and/or services. See TMEP §807.12(a).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each
international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R.
§§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens
for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP
§904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and
billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a new drawing of the mark that agrees with the mark on the specimen and, if appropriate, an amendment to the color claim
and/or mark description that conforms to the new drawing. As discussed below, applicant must amend the drawing and mark
description to indicate that the clear box itself is not claimed as part of the mark. Upon this amendment of the drawing and mark
description, as indicated below, the specimen refusal will be obviated.
(2) Submit a different specimen (a verified “substitute” specimen ) that (a) was in actual use in commerce at least as early as the filing
date of the application or prior to the filing of an amendment to allege use and (b) shows the mark or a substantially exact representation
of the mark in the drawing in actual use in commerce for the goods and/or services identified in the application.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic
Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/J3.jsp.
Applicant should note the following additional ground for refusal.
The drawing of applicant’s applied-for product packaging mark is not acceptable because it depicts in solid lines nondistinctive elements that
are incapable of functioning as a mark. See TMEP §1202.02(c)(i)(B); cf. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58
USPQ2d 1001, 1006 (2001); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). Generally, nondistinctive elements of a product
packaging mark that are incapable of functioning as a mark are unregistrable and thus are required to be shown in broken or dotted lines on the
drawing. See 15 U.S.C. §§1051-1052, 1127; 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A.
1980); TMEP §1202.02(c)(i)(B).
#:262
Specifically, the cube-shaped clear box itself is nondistinctive and incapable of functioning as a mark. The evidence attached to the previous
Office action from a Google Image search shows eleven examples of candy being presented in a clear, cube-shaped box. Thus, a cube-shaped,
clear box is a common design for candy packaging that is not unique and would be not be capable of creating a commercial impression itself
distinct from accompanying words or the stripe and diamond design.
However, the entire mark is not incapable. The stripe and diamond label and placement on the box are capable of being registered.
Therefore, applicant must provide (1) a new drawing of the mark showing the nondistinctive elements in broken or dotted lines, and (2) an
amended mark description that references the matter in broken or dotted lines and indicates such matter is not claimed as part of the mark. See
TMEP §1202.02(c)(i)(B), (c)(ii). Applicant must provide the amended drawing regardless of whether the remaining portions of the mark are
determined to be registrable. TMEP §1202.02(c)(i)(B).
The amended drawing should also remove the hatched stippling on the stripe and diamond design since the specimen shows that this
portion is not clear – unless the mark description indicates that the hatched stippling on the label indicates opaque areas.
Applicant may submit the following mark description, if accurate:
The mark consists of a three-dimensional configuration of a clear cube-shaped box with a label across the top of the box
beginning as a stripe, forming a diamond shape and culminating back into a stripe that tapers to a pointed end that proceeds
down the front of the box. The hatched stippling on the label indicates that the label is opaque. The hatched stippling on the box
indicates that the cube-shaped box is clear and is not part of the mark. The broken lines depicting the shape of the clear cube-
shaped box indicate placement of the mark on the box and that the box itself is not part of the mark.
See TMEP §1202.02(c)(ii).
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Essentially, applicant argues that the box itself is registrable in addition to the label and its position on the box because the label ties the label and
box together and therefore inseparable. However, the law and evidence discussed above shows that clear box packaging to hold candy is too
common to be registrable in and of itself.
Accordingly, the requirement to amend the drawing and mark description is maintained as final.
Response Options
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C.
§1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements
and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA)
with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee
required for filing a petition. 37 C.F.R. §2.6(a)(15).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application
online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b),
2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
$125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations,
TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without
incurring this additional fee.
#:263
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications
and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email
address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
/Parker Howard/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
571-272-6548
Parker.Howard@uspto.gov
response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official
notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking
status, see http://www.uspto.gov/trademarks/process/status/.

#:264

Sent: 6/22/2018 1:08:27 PM
Attachments:


“Documents.”
response time period. Your response deadline will be calculated from 6/22/2018 (or sooner if specified in the Office action). A response
transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
response period. For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
responses to Office actions. Instead, the USPTO recommends that you respond online using the TEAS response form located at
http://www.uspto.gov/trademarks/teas/response_forms.jsp.
TSDR@uspto.gov.
WARNING
“fees.”
2 Samuel G. Brooks
CALL & JENSEN
6 Tel: (949) 717-3000
Fax: (949) 717-3100
7
8
9
12
13
14 corporation,
[PROPOSED] ORDER ON MOTION
15 Plaintiff, TO DISMISS COMPLAINT
16 vs.
17
BOUQUET BAR, INC., a Delaware
18 corporation; BOUQUET BAR, LLC, a
Wyoming limited liability company;
19 DAVID (DAOUD) YUSUF, an individual;
20 ALEX AMIDI, an individual; JEFFREY
MATSEN, an individual; and SAL AZIZ,
21 an individual,
22 Defendants.
23
25
26
27
28
BOU04-01:2294405_1:9-10-18 -1-
[PROPOSED] ORDER ON MOTION TO DISMISS COMPLAINT
1 Having read and considered the points and authorities presented by the parties in
2 their papers and at oral argument, the motion of Defendants Bouquet Bar, Inc., Bouquet
3 Bar, LLC, David Yusuf, Alex Amidi, and Sal Aziz to dismiss the Complaint is hereby
4 GRANTED WITH PREJUDICE.
5 I. BACKGROUND
6 According to Plaintiff, Joshua Resnick and Rosie O’Neill launched Sugarfina in
7 2012 with the intent of creating a luxury candy and gift-giving brand. [Complaint ¶¶ 1-
8 2]. Sugarfina products are currently available to the public both online and in luxury
9 retail stores, and Sugarfina also caters to corporate clients. [Complaint ¶¶ 3-5]. The
10 Complaint further alleges that Sugarfina’s distribution channels are well established,
11 and that it has a popular following in the United States. [Complaint ¶¶ 6, 8]. Plaintiff
12 alleges that it has advertised extensively in the United States, has received unsolicited
13 media attention throughout the world, and has received various awards. [Complaint ¶¶
14 27-28, 30].
15 According to the Complaint, Plaintiff has utilized a variety of product designs
16 and packaging with certain common thematic elements. At the most basic level,
17 individual packages of Sugarfina candies may be purchased at its retail stores in
18 individual clear plastic cubes, and may also be purchased in combinations of two, three,
19 four, or eight cubes, which are packaged together in a paper gift box. [See Complaint ¶
20 64]. Plaintiff’s two-, three-, and four-cube gift boxes consist of a high-sided rectangular
21 or square box, open at the top, which nests with a slightly larger rectangular or square
22 box that is open at the end. [See Complaint ¶¶ 32, 34, 64, Exh. 1]. By contrast, the
23 eight-cube boxes have a hinged lid that attaches along one edge, and closes with a flap
24 (presumably magnetic) on the opposite side. [See Complaint Exh. 2]. Regardless of the
25 size, each box utilizes a raised paper tray with well cut-outs. [See Complaint ¶¶ 32, 34,
26 64, 78, Exhs. 1, 2]. As shown in the Complaint, these wells secure the cubes in place
27 within the box, and provide space surrounding each cube.
28
BOU04-01:2294405_1:9-10-18 -2-
1 Sugarfina has applied for several trademarks, including three applications to

2 register trade dress. In November 2014, the United States Patent and Trademark Office
3 (USPTO) refused Plaintiff’s application to register a shade of blue used on its
4 packaging on the grounds that Plaintiff had not established secondary meaning. Rather
5 than attempt to prove secondary meaning (required for registration on the Principal
6 Register), Plaintiff settled for registration on the Supplemental Register. More recently,
7 Plaintiff filed applications to register the design of its clear plastic cubes as trade dress.
8 These applications were refused on the grounds that a “cube-shaped, clear box is a
9 common design for candy packaging that is not unique and would not be capable of
10 creating a commercial impression.”
11 Plaintiff alleges that in 2017 Defendants began producing, selling, and marketing
12 what it pejoratively refers to as “copycat products.” [Complaint ¶ 64]. Sticking to the
13 facts, Plaintiff’s allegation is that Defendants sell candy products “in cubes and gift
14 boxes with spaced cube receiving wells.” [Complaint ¶ 63]. The images in the
15 Complaint depicting Defendants’ products feature opaque orange cubes containing
16 products such as candies, nuts, tea packets, and plants.1 [Complaint ¶ 64]. Most of these
17 cubes are closed with a clear plastic lid and a paper band bearing the words
18 “BOUQUET BAR” in capital letters.2 [Complaint ¶ 64]. The cubes are sold in gift
19 boxes in combinations of two, three, or six. [Complaint ¶ 64]. The gift boxes are white
20 on the interior, and orange on the exterior. [Complaint ¶ 64]. The boxes are closed with
21 a lid that lifts off the top of the box, and the top edge of each box is beveled to allow the
22 lid to lie flush with the exterior of the box. [Complaint ¶ 64]. The words “BOUQUET
23 BAR” are printed in gold lettering on the lid, below a wheel-like design of six orange
24 lower case “b’s” arranged on a golden circle. [Complaint ¶ 64]. Each gift box contains a
25 tray with well cut-outs that secure each cube in place and provide for space surrounding
26 each cube. [Complaint ¶ 64].
27
1 The image in the complaint shows a succulent. [Complaint ¶ 64].
28 2 The cube containing a succulent is shown without a lid.
BOU04-01:2294405_1:9-10-18 -3-
1 Defendants now move to dismiss Plaintiff’s complaint under Fed. R. Civ. P.

2 12(b)(6) for failure to state a claim upon which relief can be granted.
3 II. LEGAL STANDARDS
4 A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) tests the
5 legal sufficiency of the claims asserted in the complaint. The issue on a motion to
6 dismiss for failure to state a claim is not whether the claimant will ultimately prevail,
7 but whether the claimant is entitled to offer evidence to support the claims asserted.
8 Gilligan v. Jamco Dev. Corp., 108 F.3d 246, 249 (9th Cir. 1997). When evaluating a
9 Rule 12(b)(6) motion, the district court must accept all material allegations in the
10 complaint as true and construe them in the light most favorable to the non-moving
11 party. Mayo v. Gomez, 32 F.3d 1382, 1384 (9th Cir. 1994). Rule 12(b)(6) is read in
12 conjunction with Rule 8(a), which requires only a short and plain statement of the claim
13 showing that the pleader is entitled to relief. Fed. R. Civ. P. 8(a)(2). Dismissal of a
14 complaint for failure to state a claim is not proper where a plaintiff has alleged “enough
15 facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly,
16 127 S.Ct. 1955, 1974 (2007). In keeping with this liberal pleading standard, the district
17 court should grant the plaintiff leave to amend if the complaint can possibly be cured by
18 additional factual allegations. Doe v. United States, 58 F.3d 494, 497 (9th Cir. 1995).
19 III. ANALYSIS
20 A. Trade dress infringement/unfair competition
21 The Complaint fails to state a claim for infringement of trade dress because it has
22 not alleged facts sufficient to support a finding that its alleged trade dress is not
23 functional. Where, as here, the alleged trade dress is not registered the party claiming
24 trademark rights bears the burden of proof on this issue. 15 U.S.C. § 1125(a)(3). As
25 such, the Complaint must allege facts plausibly establishing this element of Plaintiff’s
26 claim. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Not only does the Complaint fail to
27 allege facts to support a plausible claim, it cannot be amended to state a claim for relief
28 because the trade dress as defined obviously is functional. Plaintiff’s claims for trade
BOU04-01:2294405_1:9-10-18 -4-
1 dress infringement and unfair competition under California law3 must be dismissed with
2 prejudice.
3 In particular, Plaintiff claims the exclusive right to use “clear top cubes” for
4 candy, both individually and in a series. [Complaint ¶ 34]. Plaintiff also claims rights
5 for “a rectangular or square product package with minimal lettering.” Obviously, boxes
6 are both commonplace and functional for holding candy, and the “clear top” of such a
7 box allows the consumer to see the contents of the box prior to opening it. Indeed, the
8 United States Patent Office (“USPTO”) rejected Plaintiff’s attempts to register its clear
9 cubic boxes as trade dress on the grounds that a “cube-shaped clear box” is “incapable
10 of functioning as a mark”—that is, that such a box is functional.
11 Plaintiff’s claim for exclusive use of “a patterned band, overlaid shapes (namely,
12 circles, diamonds, or hearts), and a triangular end-tab,” fares no better. The images in
13 the Complaint indicate that this label design serves secures the lid of each cube-shaped
14 box. Without such a band, box lids would not remain in place during handling or
15 delivery. In other words, the band element of Plaintiff’s alleged trade dress clearly
16 “contributes to efficiency or economy in manufacturing or handling, or to durability.” 1
17 McCarthy on Trademarks and Unfair Competition § 7:87 (5th ed.).
18 Similarly, Plaintiff cannot enjoy exclusive rights for a “series of cube wells or
19 trays” on the “inside bottom surface of the product package,” with the wells “each being
20 spaced from one another within the product package.” As depicted in the Complaint, the
21 cube wells or trays space the cubes from each other and from the sides of the larger box.
22 Just as the band on each cube keeps the lid of each clear box in place, the wells or trays
23 keep each clear cube in its proper place within the larger package. Moreover, by
24 creating space around each cube, the welled tray allows the consumer to grasp an
25 individual cube and remove it from the larger box without dislodging the other cubes.
26
27 3
Plaintiff’s state law claims are based entirely on the allegations in its claims for federal
trade dress infringement, and are governed by the same principles. See Rearden LLC v.
28 Rearden Commerce, Inc., 683 F.3d 1190, 1221 (9th Cir. 2012).
BOU04-01:2294405_1:9-10-18 -5-
1 The Complaint does not allege any facts that would support a finding that its
2 alleged trade dress is non-functional. Moreover, in light of the foregoing analysis the
3 the Court cannot conceive of any way in which the Complaint could be amended to
4 satisfy this element of a claim for trade dress protection. Each of the elements of
5 Plaintiff’s alleged trade dress serves a functional purpose, and granting Plaintiff
6 exclusive rights to those elements would put competitors such as Bouquet Bar at a
7 significant non-reputation-related disadvantage. See TrafFix Devices, Inc. v. Marketing
8 Displays, Inc., 532 U.S. 23, 32 (2001) (quoting Qualitex Co. v. Jacobson Products Co.,
9 Inc., 514 U.S. 159, 165 (1995)). Therefore, the first and second causes of action are
10 dismissed with prejudice.
11 B. Patent infringement
12 The Complaint fails to state a claim for patent infringement because no
13 reasonable finder of fact could conclude that Defendants infringed the patent.
14 Unlike utility patents, “‘[d]esign patents have almost no scope’ and are ‘limited
15 to what is shown in the application drawings.’” Razer Auto, Inc. v. Omix-ADA, Inc., No.
16 SACV-16-00300-AGS-PX, 2016 WL 6678008, at *2 (C.D. Cal. Apr. 20, 2016)
17 (quoting Times Three Clothier, LLC v. Spanx, Inc., 2014 WL 1688130, at *2 (S.D.N.Y.
18 Apr. 29, 2014). Design patent protection extends only to “the novel, ornamental features
19 of the patented design,” not the functional elements. OddzOn Prods., Inc. v. Just Toys,
20 Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). And when a patented design contains both
21 functional and non-functional elements, the Court must construe the scope of the claim
22 “to identify the non-functional aspects of the design as shown in the patent.” Egyptian
23 Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008). Thus, the protection
24 for design patents such as the one at issue in this case is extremely narrow.
25 After construing the patent to filter out functional elements, the Court must
26 determine whether the articles are substantially identical—that is, whether in the eyes of
27 an ordinary observer “the resemblance is such as to deceive such an observer, inducing
28 him to purchase one supposing it to be the other.” Gorham Mfg. Co. v. White, 81 U.S.
BOU04-01:2294405_1:9-10-18 -6-
1 511, 528 (1871). This hypothetical “ordinary observer” must be assumed to be familiar
2 with the prior art, so as to enable her to filter out of the analysis any similarities of
3 elements in the public domain. See Egyptian Goddess, 543 F.3d at 683.
4 The patented design can be described as consisting of a rectangular five-sided
5 box, open at the top, with a pull-loop placed in the center of the top edge of one of the
6 box ends (the “Inner Box”). The Inner Box contains two transparent lidded cubic boxes
7 (the “Cubes”) and a tray with two wells. The Cubes are equal to each other in size, with
8 each edge approximately equal to the depth of the Inner Box so that when they rest on
9 the bottom of that box the top of each Cube is approximately the same height as the
10 Inner Box’s opening. The tray wells space the Cubes evenly both from each other and
11 from the walls of the Inner Box. The Inner Box slides laterally into another, slightly
12 larger, rectangular five-sided box, which is open at the end (the “Outer Box”). The
13 Inner Box is kept in place within the Outer Box by friction, and may be removed by
14 using the pull-loop. Several elements of the design are disclaimed, and do not make up
15 any part of the patent, including: (1) the spacer tray, (2) the Outer Box, and (3) the band
16 closures for each Cube lid.
17 In construing the patent, it appears that several elements of the patented design
18 are functional. Some of these functional elements are disclaimed, including the tray
19 (which secures the Cubes within the Inner Box while allowing for empty space
20 surrounding each Cube), the Outer Box (which functions as a lid for the Inner Box), and
21 the band closure element (which secures the lid of each Cube). Other functional
22 elements, however, are not disclaimed, including the pull-loop (which allows the user to
23 separate the otherwise tightly fitting Inner and Outer Boxes) and the transparency of the
24 Cubes (which allows the consumer to see the contents of the cube from all six sides
25 without removing the lid). When these functional elements are filtered out, the scope of
26 the patent is extremely narrow.
27 Comparing the patented design with the accused design, the differences between
28 them are readily apparent. Whereas the patented design consists of an inner box that
BOU04-01:2294405_1:9-10-18 -7-
1 slides in and out of an outer box by use of a pull-loop, the Defendants’ packaging
2 consists of a rectangular box with a beveled top edge and a lift-off lid. [See Complaint ¶
3 77]. The cubic boxes in Defendants’ product are opaque—not transparent. [Id.]. And
4 compared to Plaintiff’s product, the cubes in Defendants’ boxes are much larger relative
5 to the box they are contained in.
6 Given these significant differences, no reasonable ordinary observer could
7 conclude that they are substantially identical. Therefore, Plaintiff’s claim for
8 infringement of the design patent is dismissed with prejudice.
9 C. Copyright infringement
10 The Complaint fails to state a claim for copyright infringement because no
11 reasonable finder of fact could conclude that Defendants infringed the copyright.
12 Contrary to the legal conclusions in the Complaint, Plaintiff’s copyright
13 registrations do not “cover the use of the candy cubes, the spaced cube arrangement, the
14 spaced cube receiving wells, and the distinctive use of a box to hold the clear cubes.”
15 [See Complaint ¶ 42]. Rather than registering a copyright for these three-dimensional
16 features of its candy boxes, Plaintiff registered only a claim for copyright in “2-D
17 artwork”—namely, certain photographs and/or drawings of boxes.
18 The boxes themselves are “useful articles” in that they have “an intrinsic
19 utilitarian function that is not merely to portray the appearance of the article or to
20 convey information.” 17 U.S.C. § 101. Boxes have the “intrinsic utilitarian function” of
21 holding objects—in this case, candies. Therefore, the boxes can only be considered a
22 sculptural work to the extent they “incorporate[] pictorial, graphic, or sculptural features
23 that can be identified separately from, and are capable of existing independently of”
24 such utilitarian aspects.
25 The Copyright Office will register a work “that portrays a useful article,” as it
26 appears to have done here. See United States Copyright Office Circular 40, Copyright
27 Registration for Pictorial, Graphic and Sculptural Works, at 2-3, available at
28
BOU04-01:2294405_1:9-10-18 -8-
1 www.copyright.gov/circs/circ40.pdf. However, as the Copyright Office explains, the

2 copyright in such a work
3 extends only to the artistic expression of the author of the pictorial, graphic,
4 or sculptural work. It does not extend to the design of the article that is
5 portrayed. For example, a drawing or photograph of an automobile or a
6 dress design may be copyrighted, but that does not give the artist or
7 photographer the exclusive right to make automobiles or dresses of the same
8 design.
9 Id. (emphasis added). Thus, the registrations referenced in the Complaint protect
10 Plaintiff’s copyright for the specific photographs of boxes that were deposited with the
11 applications, but they do not extend to the boxes themselves.
12 Reviewing the images in the complaint, Sugarfina’s boxes contain no pictorial or
13 sculptural features that are separate and independent from their utilitarian function as a
14 box. The boxes do include some separately identifiable graphic features—including an
15 overlapping medallion pattern and a candelabra design—and these features are capable
16 of existing independently. However, Plaintiff does not allege any facts to support a
17 finding that Defendants copied either the overlapping medallion pattern or the
18 candelabra graphic.
19 No reasonable finder of fact could find that Defendants copied any of the
20 elements of Plaintiff’s boxes that are potentially copyrightable, and the Complaint does
21 not offer any hint that it could be amended to allege such facts. The claim for copyright
22 infringement is therefore dismissed with prejudice.
23 IV. CONCLUSION
24 For the foregoing reasons, the Complaint is dismissed with prejudice. IT IS SO
25 ORDERED.
26
27 Dated: _____________ By:
HON. CORMAC J. CARNEY
28 UNITED STATES DISTRICT JUDGE
BOU04-01:2294405_1:9-10-18 -9-

Sugarfina v. Bouquet Bar - Motion To Dismiss

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Sugarfina v. Bouquet Bar - Motion To Dismiss

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Case 8:18-cv-01305-CJC-DFM Document 39 Filed 09/10/18 Page 1 of 2 Page ID #:168

1 TO PLAINTIFF AND ITS ATTORNEYS OF RECORD, PLEASE TAKE

1 TABLE OF AUTHORITIES (con’t)

15 Rule 12(b)(6) of the Federal Rules of Civil Procedure ..................................................... 1

1 type of packaging claimed as trade dress is commonplace or functional, use by a

27 Complaint does not allege facts to support a finding of copyright infringement.

1 1. The registered copyrights are for photos and drawings of

PTO Form 1478 (Rev 9/2006)

Trademark/Service Mark Application, Principal Register

The table below presents the data as entered.

Input Field Entered

*COUNTRY United States

LEGAL ENTITY INFORMATION

GOODS AND/OR SERVICES AND BASIS INFORMATION

Sugarless candies; Sweets.

ORIGINAL PDF FILE SPE0-76196197121-160945405_._slider_box_specimen.pdf

SPECIMEN DESCRIPTION picture of slider box.

*TOTAL FEE PAID 325

PTO Form 1478 (Rev 9/2006)

Trademark/Service Mark Application, Principal Register

Serial Number: 86355764

Original PDF file:

The applicant's current Attorney Information:

The applicant's current Correspondence Information:

Signature: /paul d. chancellor/ Date: 08/02/2014

Serial Number: 86355764

To: Sugarfina, LLC (pdc@oceanlawgroup.com)

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

U.S. APPLICATION SERIAL NO. 86355764

APPLICANT: Sugarfina, LLC

STRICT DEADLINE TO RESPOND TO THIS LETTER

ISSUE/MAILING DATE: 11/20/2014

Sections 1, 2 and 45 Color Refusal

Accordingly, the mark is refused registration on the Principal Register.

Suggest Amendment to Supplemental Register

Request for Information—Color

(6) An explanation describing any other similar use of color by applicant

Color Description of the Mark

Applicant must submit the following:

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

To: Sugarfina, LLC (pdc@oceanlawgroup.com)

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

Please follow the instructions below:

To: Sugarfina, LLC (pdc@oceanlawgroup.com)

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

U.S. APPLICATION SERIAL NO. 86355764

APPLICANT: Sugarfina, LLC

AMENDMENT TO SUPPLEMENTAL REGISTER

The application is amended to the Supplemental Register.

DESCRIPTION OF THE MARK

The following description of the mark is added to the record:

See 37 C.F.R. §2.37; TMEP §§808 et seq.

To: Sugarfina, LLC (pdc@oceanlawgroup.com)

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

Please follow the instructions below:

Trademark/Service Mark Application, Principal Register

The table below presents the data as entered.

Input Field Entered

*COUNTRY United States