Debevoise Wins Motion to Dismiss Ruling for James Beard Foundation

8 March 2022

Debevoise & Plimpton LLP has won an important motion to dismiss ruling on behalf of the James Beard Foundation (JBF) in a case relating to its tagline, GOOD FOOD FOR GOOD. The ruling dismisses JBF’s opponent’s effort to cancel JBF’s trademark registrations in its tagline. The firm is representing JBF on a pro bono basis.

JBF first developed the tagline in 2018 as a perfect way to encapsulate its mission of championing a standard of good food anchored in talent, equity and sustainability. Unfortunately, two other parties were already using that trademark – a chef in San Francisco who used it for his charity and a condiment company in Canada that had just began to use the same name for its products. The firm helped JBF acquire the chef’s rights to register GOOD FOOD FOR GOOD as a trademark in the United States Patent and Trademark Office (USPTO), and resolved its dispute with the condiment company by also acquiring the condiment company’s trademark and licensing it back for use on condiments.

Having secured its rights in the slogan GOOD FOOD FOR GOOD, JBF was distressed to learn in 2020 that a Florida charity, Epic-Cure, adopted a very similar slogan – GOOD FOOD FOR GOOD PEOPLE – and was seeking to register that mark in the USPTO. When the parties were unable to resolve their dispute, Debevoise filed a notice with the USPTO opposing the registration of Epic-Cure’s trademark.

Epic-Cure responded with an aggressive set of counterclaims, in which it sought to cancel JBF’s trademark registrations for GOOD FOOD FOR GOOD on a variety of grounds, including fraud, abandonment, and failure to identify the proper owner. Epic-Cure also asserted six affirmative defenses, including fraud, unclean hands, laches, estoppel, acquiescence, and failure to state a claim. This challenge created the risk that JBF might lose the very trademark rights it sought to enforce, and could wipe out JBF’s years of work around its new tagline.

On March 4, the Trademark Trial and Appeal Board (TTAB) granted Debevoise’s motion to dismiss all of Epic-Cure’s counterclaims, and most of its affirmative defenses. The TTAB foreclosed Epic-Cure’s ability to replead most of its counterclaims, holding that various of Epic-Cure’s claims were “speculative and not plausible” and based on “a nonexistent requirement.” In addition, although motions to strike are generally disfavored, the TTAB struck all but one of Epic-Cure’s affirmative defenses, holding that one of Epic-Cure’s key arguments was “not well-taken.”

The Debevoise team was led by litigation partner David Bernstein and included associates Kate Saba and Marissa MacAneney. A broader team including IP Legal Assistant Harriett Sasso contributed to earlier parts of the project to secure JBF’s trademark rights or oppose Epic-Cure’s efforts to misappropriate JBF’s trademark.