154 F. Supp. 3d 48
S.D.N.Y.2015Background
- Pulse Creations, a New York clothing distributor, owns a registered federal trademark for the PINKY mark (registered Oct. 30, 2012) for specified adult apparel, excluding "baby, juvenile and toddler clothing and accessories."
- Vesture Group applied to register PINKY LOS ANGELES in 2013; the USPTO refused due to likely confusion with Pulse’s mark, and Vesture filed then withdrew a petition to cancel Pulse’s registration.
- Pulse alleges Vesture continued to use the PINKY mark on adult and children’s apparel and that Retailer Defendants (Burlington, Sears, JCP) bought and resold those items, causing infringement and unfair competition.
- Pulse sued under Lanham Act §§ 32 and 43(a), New York common law claims, and New York Gen. Bus. Law § 349; Defendants moved to dismiss under Fed. R. Civ. P. 12(b)(1) and 12(b)(6).
- The court struck extrinsic declarations submitted by Defendants for the Rule 12(b)(6) context and treated standing/12(b)(1) arguments that relied on factual disputes as premature.
- The court dismissed Pulse’s § 349 claim for failure to allege public-oriented harm beyond ordinary trademark injury, but denied dismissal of Lanham Act claims and New York common-law claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing under § 1114 where registration excludes "baby, juvenile and toddler clothing" | Pulse alleges Defendants sold adult and other apparel bearing PINKY, so it has standing to sue for infringement | Defendants contend the accused goods fall within the registration exclusion, leaving Pulse without protectable rights and thus no standing | Court: Denied dismissal for lack of standing; factual disputes inappropriate to resolve on 12(b)(1)/12(b)(6) at this stage |
| Failure to plead likelihood of confusion under § 1114/§ 43(a) | Pulse alleges identical mark use on overlapping goods and attached exhibits showing accused products | Defendants argue Pulse admitted its mark is weak and that exhibits show only girls’ clothing excluded by registration | Court: Likelihood of confusion is fact-intensive; plaintiff has plausibly alleged confusion — claim survives dismissal |
| § 43(a) product infringement vs. false advertising | Pulse asserts product-infringement theory (false designation of origin) supported by sales/marketing of PINKY goods | Defendants argue no false or deceptive statements were pleaded (mislabeling false advertising) | Court: Pulse adequately pleaded product-infringement under § 43(a); claim survives despite inartful pleading of both theories |
| N.Y. Gen. Bus. Law § 349 claim | Pulse alleges Defendants’ conduct is deceptive to the public and harms public interest | Defendants contend trademark disputes alone do not show public-oriented deception/harm | Court: § 349 claim dismissed as Pulse failed to plead public harm beyond ordinary trademark injury; leave to replead denied |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard requires plausible claims)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility standard for complaints)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir.) (elements of trademark infringement analysis)
- Makarova v. United States, 201 F.3d 110 (2d Cir.) (plaintiff bears burden to show subject-matter jurisdiction)
- Zappia Middle E. Constr. Co. v. Emirate of Abu Dhabi, 215 F.3d 247 (2d Cir.) (courts may consider evidence outside pleadings on Rule 12(b)(1) motions)
- Van Praagh v. Gratton, 993 F. Supp. 2d 293 (E.D.N.Y.) (trademark infringement not typically cognizable under N.Y. Gen. Bus. Law § 349 absent public harm)