Rockland Exposition, Inc. v. Alliance of Automotive Service Providers, 894 F. Supp. 2d 288

Background

REI sues AASP and others alleging federal and New York state law claims arising from dispute over the NE trade show and the NE mark.
AASP terminated or sought to sever participation in the 2009 show; dispute centers on contract terms (2004 Agreement) and automatic renewal, as well as non-compete provisions.
REI and AASP competed over use of the term “Northeast” in promoting and branding automotive trade shows since the 1980s.
Both REI and AASP sought federal service mark protection for “Northeast”; the TTAB proceedings were suspended pending this action.
REI asserts senior user status and claims its NE mark has acquired secondary meaning; AASP contends REI did not establish service mark use or protectable rights.
The court has previously granted partial summary judgment on contract-related issues; this decision addresses Counts Four through Eleven and disposition on stated issues.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether REI’s NE mark is a protectable service mark	REI used NE to identify services and shows, constituting a service mark.	REI did not use NE to identify REI’s services; use was for the shows themselves.	Disputed issue of material fact exists on service-mark use.
Whether REI’s NE mark has acquired secondary meaning	Long, exclusive use and advertising show consumer association with REI as source.	Use by AASP and third parties, and lack of consumer evidence, weighs against secondary meaning.	Secondary meaning not established; weight against protection.
Whether REI can rely on related-companies doctrine for first use	REI controlled related company Northeast RV Shows’ use of NE since 1983.	Relatedness not proven; control over use and quality of the mark is insufficient.	Material facts exist as to related-company control; not resolved.
Whether REI’s NY dilution/unfair-competition claims survive without secondary meaning	Descriptive mark with senior rights may protect against dilution/unfair competition.	NY claims require secondary meaning or misappropriation; here lacking.	Dismissed where secondary meaning not shown; unfair competition also lacking bad-faith showing.
Whether AASP’s conduct constitutes tortious interference with contract/relations	AASP solicited exhibitors and used NE to promote its own show, impairing REI.	Actions were economic competition; no wrongful means or improper motive shown.	Tortious interference with contract/relations dismissed.

Key Cases Cited

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (establishes federal standard for protected marks; secondary meaning not required for unregistered marks under certain contexts)
Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976) (four-category framework for mark distinctiveness (generic, descriptive, suggestive, arbitrary/fanciful))
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (recognizes that registration standards inform protection for unregistered marks under §43(a))
Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519 (11th Cir. 1991) (descriptive marks require secondary meaning for protection)
Centaur Communications, Ltd. v. Genesee, 830 F.2d 1217, 830 F.2d 1217 (2d Cir. 1987) (six-factor test for secondary meaning (advertising, consumer studies, media, sales, copying, duration/exclusivity))
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) (strength of mark; secondary meaning essential for protection of descriptive marks)
ITC Ltd. v. Punchgini, Inc., 518 F.3d 159 (2d Cir. 2008) (unfair competition and misappropriation require proof of deliberate copying and secondary meaning)
Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012) ((cited for context on trademark/unfair competition; not an official reporter here))
Capital Mkt. v. Lane Capital Mgmt., 192 F.3d 337 (2d Cir. 1999) (descriptive marks acquire secondary meaning through use)