LOS ANGELES — Luxury candy boutique Sugarfina, accused of infringing on Global Apogee's "Candy-Gram" trademark, had its motion to have the case dismissed denied by the U.S. District Court for the Central District of California.
The order said Global Apogee has held the trademark for the Candy-Gram name “in interstate commerce in connection with the sales of candy and greeting cards since it was issued in 1995 and has renewed it every 10 years,” according to the Oct. 10 order.
Sugarfina has been using the name on its website and as part of a company telephone number, the order said.
U.S. District Judge Ronald Lew
“Defendant’s website features the option ‘Candygram,’ which allows customers to send candy products with messages through their website and in-store kiosks,” it said.
In its lawsuit, which was filed on June 11, Global Apogee claimed that Sugarfina had been infringing on its trademark since at least February, and Sugarfina “has refused to comply” with a cease-and-desist letter sent by Global Apogee on April 26.
Sugarfina argued in its motion to dismiss the lawsuit that Global Apogee “has not pleaded sufficient facts showing a likelihood of confusion” between each company’s “Candy-Gram” name, Senior U.S. District Judge Ronald Lew said in the Oct. 10 order.
However, Lew said that “because the parties use the same word in connection with the same type of services, they are not obviously dissimilar. Thus, it is premature to conduct a likelihood of confusion analysis, and the marks are similar enough to survive a dismissal at this stage.”
The order denied Sugarfina’s motion to dismiss claims of trademark infringement, California common law unfair competition, common law trademark infringement and service mark infringement.
It did, however, grant Sugarfina's motion for judicial notice of the fact that the word candygram has been widely used in the public realm such as in the film "Blazing Saddles," television show "Saturday Night Live" and in the Collin's dictionary.
The court gave Sugarfina 21 days to amend its dismissal request on claims of trademark dilution, unfair competition, trade dress infringement and false designation, intentional interference with prospective economic advantage and California unfair competition.
Lew also dismissed Global Apogee’s unjust enrichment claim.