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Milk Street Cafe, Inc. v. CPK Media, LLC

United States District Court, D. Massachusetts

August 9, 2017

CPK MEDIA, LLC, d/b/a MILK STREET KITCHEN, Defendant. CPK MEDIA, LLC, Counterclaim-Plaintiff,
MILK STREET CAFE, INC., Counterclaim-Defendant.


          Denise J. Casper United States District Judge


         Last 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.

         On the 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.[1]


         A. MSC

         1. 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; 1-159:11-13.[2]

         2. 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.

         3. From 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.

         4. The MSC café hours are from 7 a.m. to 3 p.m. on Monday to Friday with no weekend hours. 1-33:17-18.

         5. 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.

         6. MSC's minimum for catering orders is $75-$100 and on average, a corporate catering order totals $330. 1-185:11-15; 1-186:11-13.

         7. MSC 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.

         8. 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. 1-177:2-4.

         9. 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.

         10. 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.

         11. The 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.

         12. The sales territory for MSC's catering customers is wider than the bulk of its café customer base. 1-69:7-15.

         13. As of July 2016, MSC had approximately 15, 000 corporate customers in its database. 2-71:9-11; Ex. 43.

         14. MSC 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. 2-66:6-10.

         15. The 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.

         16. 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.

         17. MSC markets its catering services primarily through its sales team. 3-19:2-6.

         18. 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.

         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.

         20. Epstein created MSC to appeal to both kosher and non-kosher customers. 1-29:24-30:8; 31:1-9.

         21. Most of the MSC's customers do not know its food is kosher. 2-98:19-22; 1-46:3-11.

         22. MSC 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.

         23. As 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.

         24. MSC 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.

         25. MSC has approximately 2000 friends on Facebook and approximately 400 followers on Twitter. 2-206:5-7; 2-206:15-17.

         B. CPK

         26. CPK 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.

         27. CPK does not offer restaurant or catering services and has no plans to do so. 5-92:7-11.

         28. CPK 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.

         29. Before picking the 177 Milk Street location, CPK scouted approximately sixty other locations. 3-95:9-20.

         30. Once it had settled on the location, CPK wanted a name that would refer to its location and would invoke its historic address. 3-111:13-112:21.

         31. By 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.

         32. By December 23, 2015, CPK had finally settled on the Milk Street Kitchen name for its new venture. 3-98:5-7; Ex. 276.

         33. At 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.

         34. 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.

         35. Unlike MSC, CPK offers no prepared food for sale at 177 Milk Street. 5-190:8-9.

         36. 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.

         37. CPK 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.

         38. CPK distributes its magazine online and in print. 5-129:1-9.

         39. CPK 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 advertising. ...

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