Powerhouse Beverage Company LLC v. Nahoum
1:22-cv-05559
S.D.N.Y.Mar 28, 2024Background
- Powerhouse Beverage Company LLC and others sued Frank Nahoum and co-defendants for trademark infringement and other claims relating to beverage marks.
- Defendants brought counterclaims, including a request for a declaration regarding the rightful ownership of the relevant trademarks.
- Summary judgment briefing has been conducted by the parties on various issues.
- The Court, under Rule 56(f), has independently identified five central issues on which it perceives no genuine dispute of material fact and requests further briefing.
- Resolution may affect the Court’s jurisdiction over the remaining claims if the main trademark issues are dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Did Defendants use the relevant marks in commerce? | Marks were used by Defendants in commerce, infringing rights. | No commercial use of marks; thus, no infringement. | TBD |
| Do Defendants have standing to seek declaratory judgment on mark ownership? | Defendants lack standing; no injury in fact; declaration unhelpful. | Defendants have standing due to asserted stake in trademark ownership. | TBD |
| Should the Court exercise jurisdiction even if Article III jurisdiction exists? | Court should exercise jurisdiction for clarity and resolution. | Court should refrain for various prudential or discretionary reasons. | TBD |
| Were the LLC to Inc. assignments invalid assignments in gross? | Assignments valid and complied with trademark law. | Assignments invalid as in gross (transfer without goodwill). | TBD |
| Should the Court retain supplemental jurisdiction after dismissing trademark claims? | Court should keep jurisdiction over remaining state claims. | Supplemental jurisdiction should be declined if federal claims are gone. | TBD |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (clarifies the commercial use requirement for trademark infringement under the Lanham Act)
- Marshak v. Green, 746 F.2d 927 (2d Cir. 1984) (explains assignments in gross principle in trademark law)
- Coal. of Watershed Towns v. EPA, 552 F.3d 216 (2d Cir. 2008) (standing requirements for declaratory judgment)
- Admiral Ins. Co. v. Niagara Transformer Corp., 57 F.4th 85 (2d Cir. 2023) (courts’ discretion to decline declaratory jurisdiction)