United States District Court, D. Massachusetts
MEMORANDUM OF DECISION
J. Casper United States District Judge
summer, shortly after Defendant CPK Media, LLC
(“CPK”) launched its new venture, Milk Street
Kitchen with well-known media personality Christopher Kimball
(“Kimball”) at its helm, Plaintiff Milk Street
Cafe, Inc. ("MSC"), a long-time café and
catering operation founded thirty-six years ago by successful
entrepreneur Marc Epstein (“Epstein”) and located
on Milk Street, filed this lawsuit. MSC asserts a
“reverse confusion” case against CPK, alleging
that CPK, although the newer of the two businesses, has and
will cause MSC harm by infringing its trademark, otherwise
undermining its goodwill and impeding MSC's market and
potential future growth. On July 29, 2016, this Court denied
MSC's motion for preliminary injunction concluding that
it had failed to show a reasonable likelihood of success on
the merits. D. 37.
eve of trial last month, MSC dropped its request for monetary
damages, but proceeded to a bench trial still seeking
permanent, injunctive relief enjoining CPK from any
infringement of MSC's mark. After a six-day bench trial
begun on July 17, 2017 in which the Court heard testimony
from the principals of both companies and competing expert
testimony, the Court now concludes that MSC has failed to
sustain its burden as to each of its claims: trademark
infringement in violation of 15 U.S.C. 1114(a) (Count I);
trademark infringement, false association and unfair
competition in violation of 15 U.S.C. 1125(a) (Count II); and
violation of Mass. Gen. L. c. 93A (Court III). CPK asserts a
single counterclaim seeking a declaratory judgment that
MSC's mark was improperly issued, has not achieved
secondary meaning and is geographically descriptive, and that
the mark should be canceled. Accordingly, and for the reasons
explained more fully below, the Court enters judgment as to
all MSC's claims for CPK and, in light of this judgment,
enters judgment for CPK on its counterclaim for declaratory
judgment in part. The Court now issues its findings of facts
and conclusions of law regarding same below.
FINDINGS OF FACT
Opened in 1981 by founder and majority owner Epstein, MSC is
located at 50 Milk Street and operates a café and
corporate catering business. 1-31:1-9; 1-32:6-8;
Although it has opened and closed other locations at various
times since 1981, MSC operates only the 50 Milk Street
location now and since the end of 2011. 1-160:1-2.
1985-1990, MSC had a location in Kendall Square, Cambridge.
1-39:23-40:3. From 1989-1993, MSC had a location in the
Longwood Galleria in Boston. 1-40:4-9; 1-41:5-6. From
1991-2007, MSC had a location in the park area at Post Office
Square in Boston. 1-57:11-17. From June to December 2011, MSC
had its only location outside of Massachusetts, located on
Wall Street in New York City. 1-52:2-5. Since the end of
2011, however, MSC has had only one location, namely the
location at 50 Milk Street. 1-160:1-2.
MSC café hours are from 7 a.m. to 3 p.m. on Monday to
Friday with no weekend hours. 1-33:17-18.
Although the MSC café at the 50 Milk Street location
has been successful, Epstein noted that its corporate
catering business is more profitable and MSC would not be in
business without its corporate catering business.
1-166:19-167:1; 1-167:2-11; 1-168:8-10.
MSC's minimum for catering orders is $75-$100 and on
average, a corporate catering order totals $330. 1-185:11-15;
serves 15, 000 customers per week, which includes café
customers and people who eat the meals ordered through its
corporate catering business. 1-168:15-17; 1-169:22-24.
MSC's café services include a bakery, sushi
station, hot entree stations and grab-and-go food options.
1-178:14-21. The average restaurant bill is $8 to $13.
MSC's customers are café customers seeking
prepared food for consumption and its corporate catering
customers are people at businesses who order prepared food
for catered meetings and events. 1-68:13-69:15.
MSC's prospective café customers are those
individuals who work, live or visit the downtown Boston area
and its prospective catering customers are people at
businesses who order food to be delivered. 2-55:15-56:21.
bulk of MSC's café customers work within five
blocks of MSC's 50 Milk Street location; a smaller
percentage of its café customers are kosher customers
from the greater Boston area and kosher customers from around
the world who visit Boston. 1-68:13-69:4.
sales territory for MSC's catering customers is wider
than the bulk of its café customer base. 1-69:7-15.
of July 2016, MSC had approximately 15, 000 corporate
customers in its database. 2-71:9-11; Ex. 43.
receives approximately five to ten corporate catering orders
per day from outside the I-495 beltway. 2-75:2-76:21;
3-30:21-31:2; Ex. 80. Such orders could be placed from
corporate headquarters from places outside of Massachusetts.
vast majority of MSC's catering customers, however, place
orders that are delivered to Boston and Cambridge with some
deliveries as far out as the Route 128 belt. 2-66:2-6.
Many of MSC's corporate catering deliveries are close
enough to its Milk Street location that they are made by
pushcarts or its fleet of delivery vans. 1-69:16-70:3.
markets its catering services primarily through its sales
MSC's corporate catering is a “personalized”
business based upon relationships with its customers;
approximately 90 percent of MSC's catering business is
repeat business. 2-57:13-58:2; 2-78:17-19.
Although MSC estimates that it spent approximately $2 million
on advertising and marketing over a ten-year period, some of
that budget included printing its logo on paper goods that it
requires to do its business. 2-85:23-86:7; Ex. 105.
Epstein created MSC to appeal to both kosher and non-kosher
customers. 1-29:24-30:8; 31:1-9.
Most of the MSC's customers do not know its food is
kosher. 2-98:19-22; 1-46:3-11.
does “very little” to target kosher customers,
2-175:21-25, but its kosher customers learn about it through
word-of-mouth, websites and/or lists that feature kosher
restaurants. 1-72:25-73:12; 2-156:1-8; 2-175:21-176:10.
Beth Epstein, the long-time director of marketing for MSC and
Epstein's wife, explained, MSC advertises and markets
through elevator advertising in local offices, wrapping its
fleet of vans with its logo, menus and flyers that are
delivered to catering customers by hand and email and by
printing its logo on paper goods such as coffee and paper
cups. 2-186:23-187:6; see 2-94:5-23; 2-95:11-21;
2-89:16-23; Ex. 298.
does not use its website or social media as a primary channel
to offer or promote its services. 3-21:20-22:12; 3-23:17-25.
has approximately 2000 friends on Facebook and approximately
400 followers on Twitter. 2-206:5-7; 2-206:15-17.
is a media company founded by husband and wife, Christopher
Kimball and Melissa Baldino. 5-78:24-79:21. CPK has multiple
platforms-website, cooking school, magazine, public radio
show and a (soon to launch) public television show for
teaching home cooks. 5-92:12-17; 5-118:7-9.
does not offer restaurant or catering services and has no
plans to do so. 5-92:7-11.
is located in the historic Flour and Grain Exchange building
at 177 Milk Street in Boston. 5-81:16-82:8; 5-83:11-84:1;
5-125:21-23; Ex. 337.
Before picking the 177 Milk Street location, CPK scouted
approximately sixty other locations. 3-95:9-20.
Once it had settled on the location, CPK wanted a name that
would refer to its location and would invoke its historic
October 2015, Baldino was urging use of the Milk Street
Kitchen name. 3-97:6-25; 3-112:22-113:13; 3-191:17-19; Ex.
18; Ex. 281.
December 23, 2015, CPK had finally settled on the Milk Street
Kitchen name for its new venture. 3-98:5-7; Ex. 276.
177 Milk Street, CPK houses its headquarters, records its
television program and holds its cooking classes and other
education panels and events. 3-95:21-24; 5-126:9-22.
Although CPK is located on the same street, Milk Street, as
MSC, unlike MSC, people cannot enter CPK's location
without invitation. 5-190:10-15.
Unlike MSC, CPK offers no prepared food for sale at 177 Milk
CPK's prospective consumers are those interested in
learning how to cook. 5-129:13-16; 5-130:4-5; 5-132:25-133:4.
uses public radio and television, as well as its social media
platforms, namely Facebook, Instagram, Twitter, to distribute
and promote its informational media content. 3-200:6-201:14;
5-117:2-15; 5-124:3-10; 5-130:7-14; 5-131:6-16; Exs. 182-184.
distributes its magazine online and in print. 5-129:1-9.
uses Facebook as the “major vehicle” to advertise
its multimedia services. 5-117:8-15. CPK currently spends
approximately $60, 000 to $70, 000 per month on Facebook