Muddy Bites, Inc. v. Evergreen USA LLC d/b/a Just The Fun Part

Background

Muddy Bites alleged that it developed and sold a chocolate-filled snack shaped like the bottom portion of a sundae waffle cone, which it called “Mini-Cones.” It alleged that Evergreen later sold similar products under “Just the Fun Part” and other private labels. Muddy Bites claimed Evergreen copied its product design, packaging trade dress—the overall appearance and design elements identifying a product—and wordmarks in an effort to confuse consumers.

Muddy Bites asserted federal and New York unfair-competition claims, federal trade-dress and trademark-infringement claims, and a request to cancel Evergreen’s registration for the tagline “Only The Best Part Of the Sundae Cone!” Evergreen moved to dismiss the amended complaint under Rule 12(b)(6), which tests whether a complaint alleges enough facts to state a legally plausible claim.

Mini-Cone Product Design

Evergreen argued that Muddy Bites’s Mini-Cone design was generic, functional, and insufficiently distinctive before Evergreen’s first alleged use in 2021. The court declined to dismiss these claims. It reasoned that Muddy Bites was not claiming exclusive rights in every ice-cream-cone-shaped product, but in a particular combination of features, including cross-hatching, curved lines suggesting a filling, and the specified cone design.

The court also relied on the fact that the United States Patent and Trademark Office had registered the design, which gave it a presumption of validity at this stage. The court said that whether the design was generic was a factual question that should be addressed later. It likewise treated functionality as a factual question unsuitable for resolution on a motion to dismiss. Finally, the court found that Muddy Bites had alleged enough facts supporting acquired distinctiveness, including advertising, sales, media coverage, alleged customer confusion, and Evergreen’s alleged copying.

Packaging Trade Dress

Evergreen argued that Muddy Bites had not identified the specific elements of its packaging trade dress. The court disagreed. It found that Muddy Bites had identified features including images of miniature cross-hatched cones with chocolate filling, brown portions contrasting with an off-white or cream-colored background, and a rectangular resealable container. The court held that this description was sufficient at the pleading stage and that the inclusion of Evergreen’s own brand name did not automatically defeat a trade-dress claim.

Tagline and Wordmark Claims

The court allowed Muddy Bites’s claim concerning “The Best Part of a Sundae Cone” to proceed. Muddy Bites alleged that it had used the phrase since at least 2019 and that consumers associated it with Muddy Bites because of its longstanding use and proximity to the Mini-Cone design. The court was not persuaded, at this stage, that the phrase was too common to function as a trademark.

The court also rejected Evergreen’s argument concerning Muddy Bites’s two registered wordmarks. Muddy Bites alleged that it had used the two phrases together on individual product bags and that consumers associated them with Muddy Bites. The court held that these allegations were sufficient under the rule requiring proof that marks were used together and had become associated in the public’s mind.

Claims Against Does 1–10

The court dismissed all claims against Does 1–10. Muddy Bites alleged, on information and belief, that one or more of them directed Evergreen’s alleged infringement or was an active force behind it. The court found that this unsupported, conclusory statement did not satisfy the requirement to plead a plausible claim. The opinion states that the claims were “dismissed” but does not specify whether the dismissal was with or without prejudice.

Disposition

Judge Lewis A. Kaplan denied Evergreen’s motion to dismiss except as to Muddy Bites’s claims against Does 1–10. Those claims were dismissed; the remaining claims were not dismissed at this stage. Because the ruling was made under Rule 12(b)(6), this opinion is classified as a procedural order under the stated classification rules, even though the court discussed the legal sufficiency of several trademark theories.