Flat Rate Movers, Ltd. v. Flatrate Moving & Storage, Inc.
104 F. Supp. 3d 371
S.D.N.Y.2015Background
- Plaintiff FlatRate Movers (doing business as FlatRate Moving) has used the mark "FLATRATE MOVING" (and variations) since 1991, owns several federal registrations (one applied 2002, others 2006 and 2010), and operates a website purchased in 1995; two registrations are incontestable.
- Defendants are FlatRate Moving & Storage, Inc. and three brothers (Moshe, Eliyahu, Itzhak Alush); the company used the name "FLAT RATE MOVERS" on trucks and purchased flatratemovers.com in 2001 and other related domains after 2004.
- Plaintiff adduces multiple instances of actual customer confusion (customers contacting defendants when intending to reach plaintiff, attributing poor service to plaintiff, and defendants not correcting mistaken customers).
- Defendants did not conduct trademark searches or obtain counsel before adopting the name; defendants had actual knowledge of plaintiff’s mark by 2004 (after prior Maryland suit) but continued using the name afterward.
- Procedurally: plaintiff moved for summary judgment; defendants largely failed to contest the 56.1 facts; court deemed many facts admitted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Federal trademark infringement / unfair competition — likelihood of confusion | Marks are registered, strong by secondary meaning and long use; defendants’ mark is similar; actual confusion exists; defendants acted in bad faith | Denied or not meaningfully contested; argue prior use and laches in conclusory fashion | Judgment for Plaintiff (summary judgment) — likelihood of confusion found; injunction ordered (except as to Itzhak for personal liability) |
| State law trademark and unfair competition (N.Y. common law) | Same showing suffices; bad faith supports state unfair competition | Defenses asserted (laches, prior use) but not supported | Judgment for Plaintiff on state claims (bad faith shown) |
| Cybersquatting (ACPA) | Domain registrations (multiple) infringe and reflect bad-faith intent to profit | Defendants argue no bad-faith intent to profit; earlier domain purchased 2001 before plaintiff’s mark was widely known | Denied as to plaintiff on summary judgment — genuine issue exists about the specific ACPA bad-faith intent; claim survives |
| Individual liability of corporate actors | Owners/advertising controllers are moving forces and personally liable | Itzhak’s active role is not established | Moshe and Eliyahu held personally liable; Itzhak not decided (question of fact remains) |
Key Cases Cited
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (sets eight-factor test for likelihood of consumer confusion)
- Arrow Fastener Co. v. Stanley Works, 59 F.3d 384 (2d Cir. 1995) (registration presumption of distinctiveness and trademark distinctiveness framework)
- Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2d Cir. 1986) (registration creates presumption of secondary meaning)
- Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) (actual confusion as strong evidence of likelihood of confusion)
- Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) (bad-faith and trademark-search/advice-of-counsel evidence discussed)
- Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004) (limitations on inferring bad faith solely from knowledge)
- Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) (ACPA bad-faith-intent standard and nonexclusive factors)
- Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125 (2d Cir. 2004) (similarity of dominant words can cause consumer confusion)