NOT FOR PUBLICATION

UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

FRESH PREPARED FOODS, INC., d/b/a 

BLUE RIDGE FARMS,

 Plaintiff,

 v.

FARM RIDGE FOODS LLC, et al.,

 Defendants.

 CIVIL ACTION NO. 10-6310 (MLC)

 MEMORANDUM OPINION

COOPER, District Judge

The plaintiff, Fresh Prepared Foods, Inc. (“Fresh Prepared 

Foods”), d/b/a Blue Ridge Farms, brought this action alleging, 

inter alia, trademark infringement by defendants, Farm Ridge Foods 

LLC (“Farm Ridge Foods”), Jeffrey Siegel, Ronald Loeb, and Luis 

Gonzalez (collectively, “the Defendants”). (See dkt. entry no. 6, 

Am. Compl.) The parties cross-move for summary judgment on the 

issues of liability and trademark infringement. (See dkt. entry 

no. 44, Pl. Mot. for Summ. J. (“Pl. Mot.”); dkt. entry no. 50, 

Defs. Mot. for Summ. J. (“Defs. Mot.”).) Fresh Prepared Foods 

moves for summary judgment in its favor as to liability on Counts 

1-6 of the Amended Complaint, the Defendants’ counterclaims, 

attorneys’ fees and costs, and an injunction prohibiting the 

Defendants from use of the specified logo, name, and references on 
2

their website. (See Pl. Mot.)1 Counts 1-6 of the Amended 

Complaint concern trademark infringement, false designation of 

origin, unfair competition, and dilution of trademarks under the 

Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), 1125(c); unfair 

competition under New Jersey state law; and common law trademark 

infringement and unfair competition. (See Am. Compl. at ¶¶ 17-38.) 

The Defendants seek a declaration that Fresh Prepared Foods has no 

right to the registered trade name or registered logo, summary 

judgment in their favor as to all claims, and an award of 

attorneys’ fees and costs. (See Defs. Mot.) 

For the reasons that follow, the Court will deny the 

Defendants’ cross motion for summary judgment, and grant the motion 

by Fresh Prepared Foods for summary judgment in part and deny it in 

part.

 

1 The trademark for the trade name “Blue Ridge Farms” (the 

“registered trade name”) was registered with the United States 

Patent and Trademark Office (“USPTO”) by Chloe Foods Corp., (“Chloe 

Foods”) on December 12, 2006, at USPTO Registration Number 

3,182,917. (See infra at I.i.) The specified logo incorporating 

that trade name (the “registered logo”) was registered with the 

USPTO by Chloe Foods on December 12, 2006, at USPTO Registration 

Number 3,182,936. (See id.)
3

I. Background2

The members of the Siegel family began selling chicken parts 

in 1938, and incorporated their store in New York as Blue Ridge 

Farms, Inc., in 1961. (See dkt. entry no. 48, Defs. Statement of 

Undisputed Facts at ¶¶ 1, 2 (“Defs. Statement”).) 

Blue Ridge Farms, Inc., and its owners entered into an 

agreement to sell the company to Thomas Kontogiannis in 2004. (See

dkt. entry no. 8, Ans. & Countercl. at ¶ 48.) Kontogiannis turned 

out to be a “career criminal” engaged in various criminal 

enterprises, including but not limited to immigration fraud, bid 

rigging, and bribing former United States Representative Randall 

“Duke” Cunningham. (Id. at ¶¶ 50-53.) The Defendants assert that 

Kontogiannis and his daughter wrongfully usurped control over Blue 

Ridge Farms, Inc.’s day-to-day operations, using entities under 

their exclusive control (including 3301 Atlantic Avenue LLC, BRF 

Acquisition LLC, and Chloe Foods), and divested Blue Ridge Farms, 

Inc.’s assets, including its intellectual property, by fraudulently 

transferring these assets to other controlled entities. (See id.

at ¶ 55-56.) The members of the Siegel family commenced a long 

 

2 These facts are largely drawn from the statements submitted 

by the parties with their papers. Unless otherwise noted, the 

facts presented are undisputed. See L.Civ.R. 56.1(a) (“any 

material fact not disputed shall be deemed undisputed for purposes 

of the summary judgment motion”); Smith v. Addy, 343 Fed.Appx. 806, 

808 (3d Cir. 2009). We thus, after ensuring that the parties’ 

respective statements of fact accurately summarize the evidence of 

record, provide citation to those statements.
4

saga of multi-forum litigation seeking the return of their 

trademark property, while all along asserting that they were the 

rightful owners and that Kontogiannis and the subsequent companies 

could not purport to have any legal interest or title to that 

property. (See id. at ¶¶ 61-63, 64, 73.)3 

i. The Bankruptcy Proceedings

The issue of ownership of that trademark property was raised 

during the Chloe Foods bankruptcy proceedings: In re Chloe Foods 

Corp., No. 08-48650 (Bankr. E.D.N.Y., Chap. 11 petition filed Dec. 

19, 2008). (See dkt. entry no. 44-1, Pl. Statement of Facts at ¶¶ 

4-16 (“Pl. Statement”).) In those bankruptcy proceedings, Chloe 

Foods moved to sell certain assets, and proposed a sale of certain 

intellectual properties to EM-ESS Acquisition LLC (“EM-ESS”). (See

id. at ¶ 4.) Jeffrey Siegel, Blue Ridge Farms, Inc., June Siegel, 

and the estate of Seymour Siegel (“the Objectors”) objected to the 

asset sale motion, arguing that Chloe Foods did not own the 

intellectual property it proposed to sell. (See id. at ¶¶ 5-14; 

 

3 See also Rothberg v. Chloe Foods Corp., No. 06-5712, 2007 

WL 2128376, at *1-*8 (E.D.N.Y. July 25, 2007) (providing a 

detailed history of the transactions between the Kontogiannis 

and Siegel families); Blue Ridge Farms, Inc. v. Kontogiannis, 26 

Misc.3d 1206 (N.Y. Sup.Ct. 2009), aff’d, 83 A.D.3d 982 (N.Y. 

App.Div. 2d Dep’t 2011).
5

see dkt. entry no. 44-4, Declaration of Donna Thompson (“Thompson 

Decl.”), Ex. A, In re Chloe Foods Corp.)

4 

Chloe Foods sought the Bankruptcy Court’s approval of a

proposed sale of assets, which specifically referenced trademarks:

(Dkt. entry no. 44-4, Thompson Decl., Ex. B, In re Chloe Foods 

Corp., Mot. for Approval of Proposed Sale of Assets at ¶ 7.) 

Enumerated in Section 2.2 of the proposed purchase agreement, the 

assets to be purchased included:

(Dkt. entry no. 44-4, Thompson Decl., Ex. C, Asset Purchase 

Agreement at 7.) As was noted by the Defendants, this agreement 

 

4 Blue Ridge Farms, Inc., an intervenor defendant in this 

action, is the company owned and operated by the Siegel family for 

many years. (See dkt. entry no. 13, Notice of Mot. to Intervene as 

Def.; dkt. entry no. 14, Aff. of Ahmed A. Massoud in Supp. of Mot. 

to Intervene at ¶¶ 6, 7.) The company is separate from the legal 

identity of the trade name “Blue Ridge Farms”, which is a distinct 

piece of intellectual property. As used herein, “Blue Ridge Farms, 

Inc.” refers to the Siegel family company. 
6

did not include the schedule enumerating all of the specific 

“trademarks” and “trade names” that were being sold; that schedule, 

Schedule 2.2 G, was instead to be provided at closing. (See id. at 

30.) Schedule 2.2 G, concerning the intellectual property of the 

debtor, was provided at closing. (See dkt. entry no. 56-5, Supp. 

Decl. of Donna L. Thompson (“Thompson Supp. Decl.”), Ex. E, 

Schedule 2.2 G (listing recipes only, despite label designating it 

to be “Recipes, Customer Lists, Trademarks, Trade Names & Written 

Contracts to be provided at closing”).)5 

Blue Ridge Farms, Inc., and Jeffrey Siegel claimed in that 

bankruptcy proceeding that the filing was fraudulent because the 

properties being sold did not belong to Chloe Foods, that the 

Kontogiannis family had engaged in extensive fraud and looting of 

the family business, and that a state court proceeding had original 

jurisdiction over the dispute that Chloe Foods was now attempting 

to evade by making the bankruptcy filing. (See dkt. entry no. 44-

5, Thompson Decl., Ex. D, Objections of Jeffrey Siegel and Blue 

Ridge Farms, Inc.) The objections mirror many of the Defendants’ 

arguments before this Court, including that the Objectors are the 

 

5 Although the Defendants hinge their arguments on the failure 

to specifically mention the registered trade name or logo in the 

Asset Purchase Agreement, or any schedule thereto, the undisputed 

facts demonstrate that the Bankruptcy Court heard argument about 

and considered a sale of all intellectual property, including the 

registered trade name and registered logo at issue here, to EM-ESS 

from Chloe Foods. See infra. 
7

true owners of the registered trade name and registered logo, and 

that the “frauds” perpetrated by the Kontogiannis family nullify 

any subsequent sales of assets procured through such fraud:

(Id. at 25.) June Siegel and the estate of Seymour Siegel also 

filed an objection, making the same arguments as described above. 

(See Pl. Statement at ¶ 7; see also dkt. entry no. 44-4, Thompson 

Decl., Ex. E, Objections of June Siegel & Estate of Seymour 

Siegel.)

The Bankruptcy Court held two hearings on the proposed sale, 

and at the second of those hearings, the Objectors, represented by 
8

counsel, objected vociferously to the proposed sale, but were 

ultimately overruled. (See dkt. entry no. 44-6, Thompson Decl., 

Ex. F, 5-21-09 Hr’ing on Mot. to Sell Property Free & Clear of 

Liens Transcript at 2, 63-76 (“5-21-09 Hr’ing”); see also dkt. 

entry no. 44-2, Pl. Br. in Supp. of Mot. for Summ. J. at 7-10, 14-

18 (“Pl. Br.”).) 

The Objectors argued to the Bankruptcy Court that the assets 

did not belong to Chloe Foods, or at the very least, there was a 

question regarding who properly owned the assets such that the sale 

of those assets could not be approved by the court; the Bankruptcy 

Court ultimately disagreed with that position:
9

(5-21-09 Hr’ing at 63.) 

The Objectors disputed the Bankruptcy Court’s understanding

that Chloe Foods had the right to transfer that title through an 

approved sale, explaining the history of the transactions between 

Kontogiannis and the Siegel family and how they were seeking a 

judgment against Kontogiannis regarding his fraudulent conveyances.

(See id. at 63-64, 70-75.) When the Objectors argued that there 

were ongoing, concurrent state and arbitration actions that could 

determine that Kontogiannis had defrauded the Siegel family and 

stolen the property at issue, the Bankruptcy Court asked:
10

(Id. at 68-69.) 

The Bankruptcy Court engaged in an extended colloquy with the 

Objectors before finding that their claim would not prevent the 

court from determining the issue of ownership or approving the sale 

of the assets. (See id. at 67-68.) 
11

(Id. at 75.) Despite the Objectors’ request that the court “carve 

out” “the Blue Ridge name” from the rest of the purchased assets, 

the Bankruptcy Court determined that the sale would go forward as 

intended, and that any right to recovery resulting from another 

action’s adjudication concerning fraud would attach to the proceeds 

from the sale. (Id. at 76.) The Bankruptcy Court explained its 

reasoning, noting that the Objectors had not established a claim 

against the assets of the estate sufficient to preclude the sale 

from going forward. (See id. at 75 (relying on “Section 363 of the 
12

Bankruptcy Code” which gave “the Court authority . . . to approve a 

transfer of assets free and clear of liens, claims and encumbrances 

provided that the interest in question is in bona fide dispute”).) 

Because the Objectors had not demonstrated a superior claim to the 

assets, the Bankruptcy Court declined to withhold approval over the 

sale. (See id.)

(Id. at 76.) 

The Bankruptcy Court confirmed the sale by Chloe Foods to EMESS, pursuant to the terms of the Asset Purchase Agreement, by way 

of an order dated May 22, 2009. (See Defs. Statement at ¶ 17.) 

The Objectors did not move for a stay of the order approving the 

sale of the assets, nor file a motion for reconsideration, nor file 

an appeal. (See Pl. Statement at ¶ 16.) The Objectors instead 
13

filed an Adversary Complaint, claiming a right to the sale 

proceeds. (See id.) 

Although the Bankruptcy Court approved the sale of the assets 

in May 2009, the assignment of the trademark property from Chloe 

Foods was not signed and delivered until August 2010, even though 

the assignment was dated as of the date that the original Asset 

Purchase Agreement was signed. (See id. at ¶ 18; see also dkt. 

entry no. 56-8, Thompson Supp. Decl., Ex. H, Tab 14, Order of the 

Bankruptcy Court Confirming Sale by Debtor Chloe Foods Corp., of 

Substantially All of the Assets of the Debtor Free & Clear of All 

Liens, Claims & Encumbrances, to EM-ESS Acquisition LLC 

(authorizing Annette Apergis to “execute, acknowledge and deliver 

all such other documents, bills of sale, assignments, conveyances 

and other instruments of transfer . . . as may be reasonably 

necessary to perform and close under the APA”).) On August 9, 

2010, on behalf of Chloe Foods, Annette Apergis executed an 

“Assignment of Trademarks”, dated as being delivered on May 23, 

2009, to assign the trademarks to EM-ESS. (See Defs. Statement at 

¶ 28.) The assignment transferred the registered trade name and 

registered logo to EM-ESS, as approved by the Bankruptcy Court. 

(See Thompson Supp. Decl., Ex. H, Tab 11, Schedule A, Trademark &

Trade Name Assignment.) This assignment was filed with the USPTO 

on August 18, 2010. (See Defs. Statement at ¶ 29.)
14

ii. The Current Action

The registered trade name and registered logo, after the 

Bankruptcy Court approved the sale, were assigned from Chloe Foods 

to EM-ESS, and EM-ESS subsequently changed its name to Blue Ridge 

Farms, LLC (“BRF”). (See Pl. Statement at ¶¶ 17-20.) BRF filed 

the assignment with the USPTO, and then sold and assigned the 

trademarks to Fresh Prepared Foods in August 2010 for $215,000. 

(See id. at ¶ 20; Defs. Statement at ¶¶ 29, 30.) Fresh Prepared 

Foods filed the assignment with the USPTO on August 25, 2010. (See

Defs. Statement at ¶ 32.) 

Fresh Prepared Foods manufactures, processes, and markets 

fresh and refrigerated prepared foods for consumer consumption, 

including heat-and-serve and ready-to-eat entrees, salads, and 

kosher dishes. (See Pl. Statement at ¶ 1.) The Defendants also 

manufacture salads, entrees, side dishes, and kosher items. (See

id. at ¶ 2.)

Fresh Prepared Foods alleges that in November 2010, it 

discovered that the Defendants “were using commercially on their 

website, www.farmridgefoods.com, a chicken logo that is very 

similar to [the registered logo]”. (Id. at ¶ 23.) The registered

logo consists of a “stylized blue rooster with red letters”:
15

(Dkt. entry no. 47-2, Aff. of Jeffrey Siegel (“Siegel Aff.”), 

Ex. 1.) The Defendants utilize the following logo on their 

products:

(Dkt. entry no. 47-17, Siegel Aff., Ex. 16 (the “weathervane

logo”).) The Defendants allege that Fresh Prepared Foods has not 

utilized the registered trademark, but instead has resorted to 

other versions:
16

(Dkt. entry no. 47-14, Siegel Aff., Ex. 13, Cole Slaw Packaging; 

dkt. entry no. 47-1, Siegel Aff. at ¶ 39.)

The registered trade name consists of the words “Blue Ridge 

Farms”:
17

(USPTO Registration No. 3,182,917.) In the “Our Team” section on

the “About Us” page of the Defendants’ website, they identify

themselves as being associated with “Blue Ridge Farms”:

 “Jeffrey Siegel, graduate of Cornell University, is the 

owner and CEO of Blue Ridge Farms, a Brooklyn, NY 

manufacturer of salads, entrees, side dishes and kosher 

items since 1938.”

 “Ron Loeb was Vice President of Sales for Blue Ridge 

Farms for many years, and achieved great success as a 

driving force for its sales team throughout the 1990’s 

into the 2000’s.”

(Dkt. entry no. 44-7, Aff. of Peter Jungsberger at ¶ 7; see dkt. 

entry no. 44-10, Jungsberger Aff., Ex. H.) 

II. Summary Judgment Standard

The standard for a motion for summary judgment is well-settled 

and will be briefly summarized here. Federal Rule of Civil 

Procedure 56 provides that summary judgment is proper if there is 

no genuine dispute as to any material fact and the movant is 

entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). In 

making this determination, the Court must “view[] the record in the 

light most favorable to the non-moving party and draw[] all 

inferences in that party’s favor.” United States ex rel. Kosenske 

v. Carlisle HMA, Inc., 554 F.3d 88, 94 (3d Cir. 2009) (citing 
18

Abramson v. William Paterson College, 260 F.3d 265, 276 (3d Cir. 

2001)).

III. Analysis

The parties seek summary judgment on the issue of 

infringement. A plaintiff must show three elements to set forth a 

claim of trademark infringement: “(1) the mark is valid and legally 

protectable; (2) it owns the mark; and (3) the defendant’s use of 

the mark is likely to create confusion concerning the origin of 

goods and services.” E.T. Brown Drug Co. v. Cococare Prods., 538 

F.3d 185, 191 (3d Cir. 2008); see 15 U.S.C. § 1114. Here, the 

parties dispute whether Fresh Prepared Foods can satisfy its burden

of demonstrating ownership of the disputed mark. Accordingly, the 

Court will resolve the matter of ownership of the registered trade 

name and registered logo before determining whether summary 

judgment on the issue of infringement or non-infringement is 

appropriate.

i. Ownership of the Trademarks

The parties dispute whether the Bankruptcy Court conclusively 

determined ownership of the trademark property, such that 

preclusive effect would prevent the Defendants from arguing here 

that Fresh Prepared Foods does not own the registered trade name or 

registered logo. Fresh Prepared Foods contends that the principles 

of res judicata and collateral estoppel require entry of judgment 
19

in its favor on its infringement claims because (1) the Bankruptcy 

Court found that the registered trade name and registered logo 

belonged to the estate of Chloe Foods as assets to sell, and (2) 

the Defendants participated in the bankruptcy proceedings by 

objecting to the Asset Sale Motion and specifically asking the 

Bankruptcy Court to make a determination as to the ownership issue

before allowing a sale. (See Pl. Br. at 2-3, 14-18.) The 

Defendants oppose the motion by Fresh Prepared Foods on the grounds 

that Fresh Prepared Foods does not have proof of ownership of the 

registered trade name or registered logo. (See dkt. entry no. 51, 

Defs. Br. in Opp’n to Pl. Mot & in Supp. of Defs. Mot. for Summ. J. 

at 2, 12-13 (“Defs. Opp’n Br.”).) Fresh Prepared Foods argues that 

(1) it is registered as the owner with the USPTO, and (2) an

inadvertent failure to have the debtor execute the document at 

closing does not vitiate the effect of the Bankruptcy Court’s 

decision to overrule the Defendants’ objections and approval of the 

sale of those assets. (See dkt. entry no. 52, Pl. Br. in Opp’n to 

Defs. Mot. for Summ. J. at 3 (“Pl. Opp’n Br.”).) 

The Court will “follow the federal rule that the law of the 

issuing court -- here, federal law -- determines the preclusive 

effects of a prior judgment.” Paramount Aviation Corp. v. Agusta, 

178 F.3d 132, 145 (3d Cir. 1999); see Burlington N. R.R. v. Hyundai 

Merch. Marine Co., 63 F.3d 1227, 1231 (3d Cir. 1995) (“[W]e apply 
20

federal common law principles of issue preclusion since we are 

examining the issue preclusive effect of a prior federal court 

action”).

Issue preclusion, or collateral estoppel, prevents parties 

from re-litigating an issue that has already been actually 

litigated. “The prerequisites for the application of issue 

preclusion are satisfied when: ‘(1) the issue sought to be 

precluded [is] the same as that involved in the prior action; (2) 

that issue [was] actually litigated; (3) it [was] determined by a 

final and valid judgment; and (4) the determination [was] essential 

to the prior judgment.’” Burlington N. R.R., 63 F.3d at 1231-32 

(quoting In re Graham, 973 F.2d 1089, 1097 (3d Cir. 1992)); see 

also Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979). 

Issue preclusion estops a litigant from advancing a position that 

he or she has presented and lost in a prior proceeding against the 

same or a different adversary. See Blonder-Tongue Lab. v. Univ. of 

Ill. Found., 402 U.S. 313, 324 (1971); Parklane Hosiery, 439 U.S. 

at 329. For defensive or offensive collateral estoppel -- forms of 

non-mutual issue preclusion -- to apply, the party to be precluded 

must have had a “full and fair” opportunity to litigate the issue 

in the first action. See Parklane Hosiery, 439 U.S. at 328, 332; 

Blonder-Tongue Labs, 402 U.S. at 331, 333.
21

The bankruptcy proceeding was conducted in the Eastern 

District of New York in 2008 to 2009. (See Thompson Decl., Ex. A, 

In re Chloe Foods Corp.) The Bankruptcy Court heard oral argument 

on the request for approval of the proposed sale of assets where 

the Objectors were represented; the Objectors filed, briefed and 

argued their opposition to the motion. (See supra at I.i.) The 

Bankruptcy Court approved the sale of Chloe Foods’ assets to EMESS, overruling the objections that were filed, briefed, and 

argued. (See id.) The proposed sale of assets included Chloe 

Foods’ “trademarks, trade names, and service names and all rights 

associated therewith and appurtenant thereto”. (Asset Purchase 

Agreement at 7.) As the Objectors and the Bankruptcy Court 

contemplated during oral argument on the motion, the sale would 

include the rights to the registered trade name, as evidenced by 

specific objections referring to the Objectors’ dissatisfaction at 

being unable to use the name “Blue Ridge Farms”: 

(5-21-09 Hr’ing at 75.) After considering the arguments raised by 

the Objectors and proponents of the sale, the Bankruptcy Court (1) 

confirmed its jurisdiction over the debtor and its power to 

determine and dispose of the assets of the estate; (2) found that 

the registered trade name and registered logo were assets of Chloe 
22

Foods; and (3) approved the final sale of the assets from Chloe 

Foods to EM-ESS. (See id. at 63, 75-76.) 

The Court finds that the necessary prerequisites for 

application of issue preclusion have been met here: (1) the issue 

of ownership of the registered trade name and registered logo is 

the same as that involved in the bankruptcy proceeding; (2) that 

issue was actually and necessarily litigated before the Bankruptcy 

Court; (3) the Bankruptcy Court determined the issue of ownership 

by a final and valid judgment; and (4) that determination was

essential to the approval of the proposed sale of the assets. See

Burlington N. R.R., 63 F.3d at 1231-32. Here, issue preclusion is 

being asserted against two of the four defendants: Jeffrey Siegel 

and Blue Ridge Farms, Inc., both of which were involved in the 

bankruptcy proceedings. (See Pl. Br. at 18.) Accordingly, the 

Court finds that -- given the “full and fair” opportunity to 

litigate the same issue in the bankruptcy proceeding enjoyed by

Jeffrey Siegel and Blue Ridge Farms, Inc. -- they may properly be 

estopped from advancing the argument that the Bankruptcy Court was 

without power to approve and effectuate the sale of the registered 

trade name and registered logo from Chloe Foods to EM-ESS. See

Parklane Hosiery, 439 U.S. at 328, 332.

The Court further finds that, as to defendants Ronald Loeb and 

Luis Gonzalez, though these defendants did not participate in the 
23

bankruptcy proceedings, they have raised here the same arguments as 

were asserted there, represented even by the same law firm. (See

supra at I.i; see also Defs. Opp’n Br. at 12-13; 5-21-09 Hr’ing at 

3.) The Bankruptcy Court provided reasoning as to its jurisdiction 

and its adjudication of the ownership of the assets, and the Court 

herein adopts it. 

Chloe Foods, as the debtor, was requesting approval for the

sale of its assets, and the Bankruptcy Court, empowered by the 

bankruptcy code, was a court of competent jurisdiction to determine 

the metes and bounds of the debtor’s estate, and then to dispose of 

its assets. (See 5-21-09 Hr’ing at 68-69, 75.) See 11 U.S.C. §§ 

363(f)(4) (“The trustee may sell property under subsection (b) or 

(c) of this section free and clear of any interest in such property 

of an entity other than the estate, only if . . . such interest is 

in bona fide dispute”), 363(p)(2) (“In any hearing under this 

section . . . the entity asserting an interest in property has the 

burden of proof on the issue of the validity, priority, or extent 

of such interest.”). Determining that Chloe Foods was the owner of 

the registered trade name and registered logo, and that the

Objectors had no evidence or judgment to resolve the bona fide 

dispute regarding the issue of ownership, the Bankruptcy Court 

found that the registered trade name and registered logo were 

assets of the estate and subject to a sale approved under Section 
24

363. (See id. at 63, 75.) Loeb and Gonzalez have failed to 

present either argument or evidence that a prior judgment or claim 

to the registered trade name and registered logo that would have 

prevented the Bankruptcy Court from approving the sale on that 

date, or that there is a genuine dispute of fact regarding some 

defect in title that could nullify the valid registration held by

Fresh Prepared Foods from the USPTO. (See Defs. Opp’n Br. at 2-11, 

12-13.) 

The Defendants, in effect, still dispute that the Bankruptcy 

Court had the power to sell the registered trade name and 

registered logo because they claim Chloe Foods did not own them. 

(See id.) The Court rejects these arguments, for it does not sit 

as an appellate court, re-examining the decision from a bankruptcy 

proceeding that took place in the Eastern District of New York in 

2009. The Bankruptcy Court decided the issue adversely to Jeffrey 

Siegel and Blue Ridge Farms, Inc. Loeb and Gonzalez have failed to 

establish a genuine dispute of material fact with respect to the 

ownership of the registered trade name and registered logo.

Therefore, the Court will grant summary judgment in favor of Fresh 

Prepared Foods and against the Defendants regarding the issue of 

ownership of the registered trade name and registered logo.
25

ii. Liability for Infringement

Fresh Prepared Foods and the Defendants also move for summary 

judgment on the issue of liability for infringement as alleged in 

Counts 1-6 of the Amended Complaint. (See Pl. Br. at 19-22; Defs. 

Opp’n Br. at 12-15.) Fresh Prepared Foods argues that the claims 

under New Jersey state law mirror those under the Lanham Act, such 

that a “violation of [the equivalent section] of the Lanham Act 

leads to a finding of liability under N.J.S.A. § 56:4-1.” (Pl. Br. 

at 21 (citing FM 103.1, Inc. v. Universal Broad. of N.Y., Inc., 929 

F.Supp. 187, 198 (D.N.J. 1996)).) As the Defendants do not argue 

that there are differences between the analyses appropriate under 

the separate counts, the Court will treat the analyses 

simultaneously. See FM 103.1, 929 F.Supp. at 198. The Defendants 

argue that no facts show infringement by the Defendants of the 

registered trade name and registered logo. (See Defs. Opp’n Br. at 

14-15.) Fresh Prepared Foods responds in its reply papers that:

[a]s the court is aware, Plaintiff’s summary judgment 

motion asks the court to declare Plaintiff the rightful 

owner of the trademarks and set the issue of 

infringement down for trial. The parties have not 

conducted discovery or retained experts on these hotly 

contested, fact sensitive issues. Hiring experts and 

conducting discovery to establish infringement and 

damages is the second step, after the court has ruled on 

the issue of ownership . . . .

(Pl. Opp’n Br. at 4.)6 

 

6 The Court notes that, per the Pretrial Scheduling Order, the 

parties concluded fact discovery on May 25, 2011, and the parties 
26

To prove trademark infringement, a plaintiff must show that: 

(1) the mark is valid and legally protectable; (2) the mark is 

owned by the plaintiff; and (3) the defendant’s use of the mark to 

identify goods or services is likely to create confusion concerning 

the origin of the goods or services. See E.T. Brown Drug Co., 538 

F.3d at 191; 15 U.S.C. § 1114. The first element, concerning

validity and legal protectability, is proven where a mark has been 

federally registered and has become “incontestable” under the 

Lanham Act. 15 U.S.C. §§ 1058, 1065. “A trademark becomes 

incontestable after the owner files affidavits stating that the 

mark has been registered, that it has been in continuous use for 

five consecutive years, and that there is no pending proceeding and 

there has been no adverse decision concerning the registrant’s 

ownership or right to registration.” Fisons Horticulture, Inc. v. 

Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994). 

If the mark at issue was federally registered and had 

become “incontestable”, pursuant to 15 U.S.C. §§ 1058 

and 1065, validity, legal protectability, and ownership 

are proved. Where a mark has not been federally 

registered or has not achieved incontestability, 

validity depends on proof of secondary meaning, unless 

the unregistered or contestable mark is inherently 

distinctive. Secondary meaning is demonstrated where, 

in the minds of the public, the primary significance of 

a product feature or term is to identify the source of 

the product itself. Although there are numerous cases 

determining secondary meaning, there is no consensus on 

 

have not moved to re-open discovery. (See dkt. entry no. 12, 

Pretrial Sched. Order.) 
27

its elements. A non-exclusive list of factors which may 

be considered includes the extent of sales and 

advertising leading to buyer association, length of use, 

exclusivity of use, the fact of copying, customer 

surveys, customer testimony, the use of the mark in 

trade journals, the size of the company, the number of 

sales, the number of customers, and actual confusion.

Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291-92 

(3d Cir. 1991) (internal citation and quotation omitted).

Trademark infringement requires that “consumers viewing the 

mark would probably assume the product or service it represents is 

associated with the source of a different product or service 

identified by a similar mark.” Checkpoint Sys. Inc. v. Check Point 

Software Techs., Inc., 269 F.3d 270, 279-80 (3d Cir. 2001). There 

are ten “Lapp factors” that are used to determine whether a product

is likely to cause confusion:

(1) The degree of similarity between the owner’s mark 

and the alleged infringing mark; 

(2) the strength of the owner’s mark; 

(3) the price of the goods and other factors 

indicative of the care and attention expected of 

consumers when making a purchase; 

(4) the length of time the defendant has used the mark 

without evidence of actual confusion; 

(5) the intent of the defendant in adopting the mark; 

(6) the evidence of actual confusion; 

(7) whether the goods, though not competing, are 

marketed through the same channels of trade and 

advertised through the same media; 

(8) the extent to which the targets of the parties’ 

sales efforts are the same; 

(9) the relationship of the goods in the minds of 

consumers because of the similarity of the functions; 

and 

(10) other facts suggesting that the consuming public 

might expect the prior owner to manufacture a product in 
28

the defendant’s market or that he is likely to expand 

into that market.

Fisons Horticulture, 30 F.3d at 473.

Questions regarding the likelihood of confusion are normally 

factual in nature. Am. Int’l Grp., Inc. v. London Am. Int’l Corp., 

664 F.2d 348, 351 (2d Cir. 1981). Nonetheless, “courts retain an 

important authority to monitor the outer limits of substantial 

similarity within which a [fact-finder] is permitted to make the 

factual determination whether there is a likelihood of confusion as 

to source,” and summary judgment is appropriate if the Court is 

satisfied that the products or marks are so dissimilar that no 

question of fact is presented. Warner Bros. Inc. v. Am. Broad.

Cos., 720 F.2d 231, 246 (2d Cir. 1983); see Durham Indus., Inc. v. 

Tomy Corp., 630 F.2d 905, 918 (2d Cir. 1980) (summary judgment 

granted to counterclaim defendant on issue of likelihood of 

consumer confusion); B&L Sales Assocs. v. H. Daroff & Sons, Inc., 

421 F.2d 352, 354 (2d Cir. 1970) (summary judgment to defendant); 

Bowmar Instrument Corp. v. Cont’l Microsystems, Inc., 497 F.Supp. 

947, 954-55 (S.D.N.Y. 1980); see also Checkpoint Sys., Inc., 269 

F.3d at 280-99.

Fresh Prepared Foods argues that, while the Defendants dispute 

that the registered logo is misleadingly similar to the weathervane 

logo, the Defendants do not deny that they have used and continue 

to use the registered trade name on their website. (See Pl. Br. at 
29

19-21.) Fresh Prepared Foods further argues that it seeks only 

partial summary judgment in the form of a determination that the 

Defendants have used and continue to use the registered trade name, 

not summary judgment with respect to damages at this juncture. 

(See Pl. Opp’n Br. at 4.) Fresh Prepared Foods contends that the 

issue of whether the registered logo and the weathervane logo are 

misleadingly similar is not dispositive, and that the infringement 

analysis is satisfied merely with the Defendants’ reference to 

“Blue Ridge Farms” –- the registered trade name held by Fresh 

Prepared Foods -- on the Farm Ridge Foods website. (See Pl. Br. at 

22; Pl. Opp’n Br. at 2-4.) 

The Defendants argue that Fresh Prepared Foods failed to 

establish that they infringed the registered logo, or engaged in 

unfair competition, under the applicable legal standards. (See

Defs. Opp’n Br. at 14-16.) The Defendants argue that Fresh 

Prepared Foods has no proof of infringement, as evidenced by its

inability to provide a single example of the Defendants’ infringing 

use of the registered trade name or registered logo in response to 

interrogatories. (See id. at 15.) The Defendants further argue 

that a “simple comparison of plaintiff’s logo with that of the 

defendants immediately establishes that they bear absolutely no 

resemblance to each other”, and that, on its face, the weathervane 

logo would not mislead or confuse the public, noting specifically
30

that the logos are different colors, have different styles, and 

contain different word marks. (Id. at 15-16.) 

We find that Fresh Prepared Foods has not met its burden of 

demonstrating that no material fact is in dispute regarding the 

issues on which it seeks summary judgment. Fresh Prepared Foods 

has established that (1) the registered trade name and registered 

logo are its property and they have been legally registered, and 

(2) the Defendants have referenced the registered trade name on 

their website. Nonetheless, there are facts in dispute concerning 

the protectability of the trademarks. Fresh Prepared Foods has not 

established that the registered trade name and registered logo have 

achieved incontestability through the appropriate affidavits or 

secondary effects. See Fisons Horticulture, Inc., 30 F.3d at 472. 

The Defendants have also established a dispute regarding the 

protectability of the registered logo by alleging that it is not 

actually in use and demonstrating that Fresh Prepared Foods is 

using a different version of the registered logo. See Ford Motor, 

930 F.2d at 292. (See Cole Slaw Packaging; Siegel Aff. at ¶ 39.) 

Moreover, there are factual disputes concerning several of the Lapp

factors that preclude summary judgment in favor of Fresh Prepared 

Foods regarding the Defendants’ liability for infringement of 

either the registered trade name or the registered logo. In

addition to the similarity of the weathervane logo with the 
31

registered logo, there are other factual disputes about elements 

underpinning a determination of likelihood of confusion, 

specifically concerning (1) the strength of the registered name and 

registered logo, (2) how long the Defendants have had the 

registered trade name on their website and used the weathervane 

logo with or without evidence of actual confusion, (3) the markets 

at which the parties’ products are directed, and (4) the 

Defendants’ intent in adopting the weathervane logo and referencing 

the registered trade name. (See Pl. Statement at ¶¶ 1, 2, 23; 

Defs. Statement at ¶¶ 38, 43-46; Siegel Aff. at ¶¶ 9, 10; dkt. 

entry no. 26-4, Exhibit Sampling of Chicken Logos.)

The Defendants have similarly not met their burden of 

establishing that there are no material facts in dispute with 

respect to the issue of non-infringement on which they seek summary 

judgment in their favor. The Court rejects the Defendants’ 

argument that the registered logo and the weathervane logo are 

facially too dissimilar to cause confusion. Both logos display 

blue chickens and arguably target similar markets. (See Siegel 

Aff., Ex. 1, Ex. 16; Pl. Statement at ¶¶ 1, 2.) The appropriate 

analysis must consider the logos separately to determine, in the 

totality of the circumstances, whether a consumer would likely be 

confused: 

the test for determining the similarity of the marks is 

“whether the labels create the ‘same overall impression’
32

when viewed separately.” Banff, Ltd. v. Federated Dep’t 

Stores, Inc., 841 F.2d 486, 492 (2d Cir. 1988) 

(citations omitted). See Am. Auto. Ass’n. v. AAA Ins. 

Agency, Inc., 618 F.Supp. 787, 792 (W.D.Tex. 1985) (In 

determining whether two marks are confusingly similar, 

appropriate test is not side-by-side comparison of 

marks, the emphasizing differences in detail, but 

whether average consumer, on encountering one mark in 

isolated circumstances of marketplace and having only 

general recollection of the other, would likely confuse 

or associate the two.) . . . . Perhaps the most 

important of these factors is the first on the Scott 

Paper list: the degree of similarity between the two 

marks. We recently held that “if the overall impression 

created by marks is essentially the same, ‘it is very 

probable that the marks are confusingly similar.’”

Fisons Horticulture, Inc., 30 F.3d at 477-78 (internal citation 

omitted). The Defendants argue that Fresh Prepared Foods still 

cannot prove infringement because it has identified no “single 

example of any alleged infringement by defendants.” (See dkt. 

entry no. 53, Reply Decl. of Ahmed A. Massoud at ¶¶ 19-20.) 

Assuming arguendo that the registered trade name and registered 

logo are protectable, in the event the Court determines that the 

Defendants’ weathervane logo is confusingly similar to the 

registered logo, then every instance where the Defendants use the 

mark constitutes infringement. See 15 U.S.C. § 1114. Similarly, 

if the Court determines that the references to “Blue Ridge Farms” 

on the Defendants’ website likely would confuse the public, then 

those references constitute infringement. See id.
33

The Court will accordingly deny both motions for summary 

judgment with respect to the issue of infringement.7

IV. Conclusion

For the reasons stated supra, the Court will grant the

Plaintiff’s motion for summary judgment in part and deny it in 

part. The Court will deny the Defendants’ cross motion for summary 

judgment. The Court will issue an appropriate order and judgment.

 s/ Mary L. Cooper 

MARY L. COOPER

United States District Judge

Dated: September 9, 2013

 

7 As to the other forms of relief sought by the parties here,

the Court finds these requests are premature and largely 

undeveloped in the papers. (Compare Pl. Mot. (requesting award of 

attorneys’ fees and costs, as well as injunctive relief), with Pl. 

Br. at 23-24 (citing to 15 U.S.C. § 1117, which permits cost 

recovery after establishment of a violation of trademark rights, 

then arguing that the Defendants should be sanctioned for the 

“almost . . . a fraud” that they perpetuated before the Court). 

Compare Defs. Mot. (requesting attorneys’ fees and costs), with

Defs. Opp’n Br. (failing to argue entitlement to attorneys’ fees or 

costs).) The Court therefore will also deny the motion as to these 

requests for relief. See Fisons Horticulture, Inc., 30 F.3d at 473 

(“Once a trademark owner demonstrates the likelihood of confusion, 

it is entitled to injunctive relief.”) (internal citation omitted); 

15 U.S.C. § 1117 (“When a violation of any right of the registrant 

of a mark registered in the Patent and Trademark Office . . . shall 

have been established in any civil action arising under this Act, 

the plaintiff shall be entitled, subject to the provisions of 

sections 29 and 32 and subject to the principles of equity, to 

recover . . . the costs of the action.”).