A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Magistrate Recommends Case Be Restored to Docket and Consent Injunction Entered

In a January 14, 2014 ruling, Magistrate Judge Henry Pitman issued a Report and Recommendation in which he recommended that plaintiff Time Square Foods Imports LLC’s motion to reopen the case and execute the consent judgment entered into with defendant Ursa Philbin in open court before Judge Pitman. In the action, Time Square foods asserted the right to use “My Skinny”-formative marks for human and pet foods under a license from a company called Eximp. Philbin, a purportedly minority shareholder in Eximp, asserted that the license was invalid. Upon a referral from Judge Engelmayer, Judge Pitman presided over a settlement conference. The parties reached a settlement, and placed its terms on the record in open court. A dispute then arose about Philbin’s right to use “Skinny” in connection with food, and Philbin refused to execute a settlement agreement.

Judge Pitman noted that the “parties’ dispute presents two issues for resolution: (1) was there a meeting of the minds on the existence of a settlement, and, if so (2) is the mark SKINNY with respect to food for humans or pets within the injunction to which the defendants agreed.” Writing that “the existence of a contract is determined by what a party says and does and not subjective beliefs,” and the Court found, based on the parties’ colloquy at the settlement conference, that “defendants unequivocally agreed to the entry of an injunction prohibiting them from ‘using the disputed marks and anything confusingly similar.’” Judge Pitman concluded that “there is a binding settlement and the only remaining issue is whether the mark SKINNY is confusingly similar to the marks MY SKINNY, MY SKINNY RICE, MY SKINNY PETS OR MY SKINNY PET TREATS for food products for human or animal consumption.”

The Court found that there “can be little question that SKINNY is confusingly similar to the marks MY SKINNY, MY SKINNY RICE, MY SKINNY PETS or MY SKINNY PET TREATES when used for food products.” Judge Pitman ruled that the “presence or absence of the single, one syllable word ‘my’ is insufficient to distinguish SKINNY from plaintiff’s marks when used in connection with similar goods.”

In a February 10, 2014 ruling, Judge Paul A. Engelmayer adopted Magistrate Judge Pitman’s Report in full. Judge Engelmayer wrote that the defendants’ objection to the Report “simply reiterates the arguments made in their original opposition – primarily, that Time Square Foods does not own an independent trademark in the word SKINNY.” The Court added that “[c]areful review of the Report reveals no clear error.”
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