Edible Arrangements Asks 11th Circ. To Revive Trademark Suit
Law360 (August 13, 2025, 9:25 PM EDT) — Attorneys for Edible Arrangements on Wednesday urged the Eleventh Circuit to overturn the dismissal of its trademark infringement suit against 1-800-Flowers, arguing a lower court wrongly found the action was barred by a prior settlement between the parties related to similar conduct.
A district court judge found that Edible Arrangements LLC’s case was barred by res judicata and a release provision contained in a 2016 settlement agreement in an underlying Connecticut federal court action Edible launched in 2014 seeking $97 million. But in Atlanta, Edward A. Bedard of Robbins Alloy Belinfante Littlefield LLC, who represents Edible, argued the lower court got it wrong.
According to Bedard, the 2016 release did not apply to post-settlement conduct and could not, therefore, be a reason for dismissing the suit. He also argued that, even if it did, the district court’s failure to explain its reasons for disposing of Edible’s breach of contract claim — or its allegation that 1-800-Flowers.com Inc. breached the 2016 agreement — requires remand on at least that claim.
“It doesn’t address the contract claim or give any reasoning why it’s granting summary judgment on that claim,” Bedard said, noting that Federal Rule of Civil Procedure 56 requires courts to state on the record their reasons for granting or denying motions for summary judgment.
As to the 2016 release, Bedard said it covers claims or causes of action that “could have been asserted in the previous litigation” and that the district court agreed it “did not apply to future accruing claims.” Where the lower court erred, he argued, was finding that the cause of action for Edible’s current claims arose before the settlement.
They did not, Bedard added.
In the 2014 case, records show Edible accused 1-800-Flowers of infringing its trademark rights in terms like ‘Edible’ and ‘Bouquet’ by using them in relation to fruit bouquets. The suit also said 1-800-Flowers was infringing trademark rights in Edible’s ‘daisy’ design — pineapple cut to look like a flower. The current case, however, concerns 1-800-Flower’s continued use of Edible’s marks in advertisements, Bedard said, arguing that each use of Edible’s marks gives rise to a cause of action that did not exist and couldn’t have been asserted in earlier litigation.
“Any use of the mark after the settlement agreement is what is actionable,” Bedard said. “Whether or not you succeed on that claim is a separate question, but I think the operative language for the release is that it only applies to claims that they had, have had or may hereafter claim to have had. So, if the claim itself didn’t accrue before the settlement, it is not released.”
The panel noted that the 2016 settlement contained a paragraph laying out a plan to seek approval from the Federal Trade Commission for the parties to enter into an agreement in which 1-800-Flowers would agree to no longer bid on, purchase or use Edible’s keywords containing its marks in marketing, advertising, promotion, manufacture, sale or distribution of its products. If the FTC did not approve, and it is in dispute whether it did, the panel said the paragraph would be considered “null and void.”
Bedard explained that the paragraph was included because there was confusion about whether the FTC would allow a “keyword bidding prohibition between two parties.” If the FTC chose not to grant approval, he said, the intention was always that the parties would be “back to where we were” with the settlement agreement standing on its own. That is ultimately what happened, he noted, and so, it is as if that paragraph never existed.
Charles H. Hooker III of Kilpatrick Townsend & Stockton LLP, representing 1-800-Flowers, pushed back on those arguments.
“Under Edible’s reasoning, if the district court had held at trial and entered judgment against all of Edible’s keyword claims asserted in the earlier litigation, Edible could turn around and the very next day, sue 1-800-Flowers for the very same claims because 1-800-Flowers continued bidding on those terms as keywords with Google,” Hooker said. “That is fundamentally at odds with the doctrine of res judicata.”
“I’m not sure that it is,” U.S. Circuit Judge Kevin C. Newsom said. “If you’re not releasing future claims, you’re only releasing claims that were or could have been asserted based on conduct up to the date of the agreement, right? So if the parties don’t settle the keyword bidding claims, and they didn’t because that paragraph is now null and void, and those claims aren’t resolved through a contractual agreement, it doesn’t prevent either side from suing on the same conduct going forward.”
Hooker disagreed, saying the dismissal in this case was “with prejudice as to all claims,” which means res judicata applies.
“The release could not have taken care of, I don’t think, claims that could not have factually accrued before the release was executed,” Judge Newsom said.
“Whether this accrued in the future is in question,” Hooker argued. “The cases define a claim as one where there is a nucleus of operative fact or the claim could have been litigated, and here, the very same conduct is at issue in the earlier litigation as is at issue here.”
“Is it the same conduct or just the same kind of conduct?” Judge Newsom asked.
Hooker said both cases concern “literally the same conduct.”
“They have not pointed the district court or this court to any conduct that is different,” Hooker continued. “They released the keyword claim because it was brought.”
“Up to that date,” Judge Adalberto Jordan said. “If they keyword bidding post-dates the release, how is that captured by the language in the release?”
Hooker said it is captured because the keyword bidding claims had accrued, were brought in Edible’s earlier suit and were litigated through to dismissal.
Again, the panel seemed to push back on that argument, asking whether each alleged use of Edible’s marks would constitute a “discrete act” under the Lanham Act.
“It is a discrete act, but it doesn’t give rise to a new claim,” Hooker said.
“If your client wanted to be clear about the fact that this was going to be forever, because I guess you’re basically saying you could never be sued for this ever again, certainly the release could have said that,” U.S. District Judge Timothy Corrigan, who sat on the panel, said. “Why didn’t the release just say that?”
Hooker acknowledged that could have been included in the release; however, he said the opposite was also true.
“It’s just odd to think that means that Edible could never sue you for a keyword bidding claim in the future, no matter when it takes place,” Judge Corrigan said. “If it’s 40 years from now, and both companies are still around, it can’t sue you?”
Hooker said that was correct, but only as to the terms “edible” and “edible arrangement,” so it wasn’t quite that substantive.
“Isn’t that the name of their company and the mark they use?” Judge Corrigan asked. “It’s kind of a big deal, right?”
Hooker said he did not think it was as it is extremely common for companies to bid on competitor’s keywords. As long as the term isn’t used in an advertisement in a way that might confuse consumers so they believe there is an affiliation between two unaffiliated brands, he argued, “merely bidding on a competitor’s term, which everyone does across all sorts of industries, just doesn’t generate that kind of confusion.”
Turning to the breach of contract claim, Judge Newsom asked Hooker whether it “had to be error” because the district court did not provide its reasoning for granting summary judgment on it.
“Isn’t this at least a partial remand to the district court, so it can explain its decision on the breach of contract claim?” Judge Newsom asked.
Hooker said courts have previously held that appellate courts can, in such situations, “review the record to determine what facts the district court found or did not find, construing the evidence in the light most favorable to the nonmoving party.” As such, he argued, the appellate court could affirm under the “right for any reason rule” based on the arguments in the record.
“I think Judge Calvert got the ultimate decision right, but I agree she did not articulate the reasons under Rule 56,” Hooker said.
The current dispute between Edible and 1-800-Flowers began in 2020, with Edible accusing its rival of bidding on its trademarks as search engine keyword terms for Shari’s Berries, a business 1-800-Flowers acquired in 2019.
1-800-Flowers countered by calling upon earlier litigation and the 2016 settlement, arguing Edible had released it from conduct giving rise to the keyword search claims and dismissed its suit with prejudice, meaning it is barred by res judicata.
U.S. District Judge Victoria Marie Calvert granted 1-800-Flowers’ motion for summary judgment against Edible IP LLC and Edible Arrangements’ suit in March 2024, prompting the appeal.
U.S. Circuit Judges Kevin C. Newsom and Adalberto Jordan and U.S. District Judge Timothy Corrigan sat on the panel for the Eleventh Circuit.
1-800-Flowers is represented by Charles H. Hooker III and Adam H. Charnes of Kilpatrick Townsend & Stockton LLP.
Edible Arrangements is represented by Jason S. Alloy, Jeremy U. Littlefield and Edward A. Bedard of Robbins Alloy Belinfante Littlefield LLC.
The case is Edible IP LLC et al. v. 1-800-Flowers.com Inc., case number 24-11347, in the U.S. Court of Appeals for the Eleventh Circuit.