Vaad L'Hafotzas Sichos, Inc. v. Kehot Publication Society
935 F. Supp. 2d 595
E.D.N.Y2013Background
- PTO approved Merkos to register the Kehot logo for books and publications within the Lubavitcher community; Vaad opposed.
- TTAB dismissed Vaad’s opposition; Vaad challenged the PTO’s registration in district court and Merkos counterclaimed for infringement, dilution, and unfair competition.
- Kehot logo originated in 1941; 1960 Merkos registered the logo as a trademark under New York law.
- Transfer of use rights to Kehot and related goodwill to Merkos occurred via a 1942 resolution; Vaad argues the transfer did not include the logo.
- Historical control and approval of logo use involved the Rebbe; after the Rebbe’s death, Merkos’ management continued the approval process.
- Court addresses ownership of the Kehot logo, its nature as a trademark, and Merkos’s counterclaims against Vaad and Chanin.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who owns the Kehot logo? | Vaad argues Rebbe owns the logo; TTAB rejected; ownership presumed with transfer of going concern. | Merkos owns the Kehot logo due to transfer of rights to use Kehot names and the logo’s integration into Merkos. | Merkos owns the Kehot logo; transfer evidence supports ownership. |
| Is Kehot logo a trademark or a certification mark? | Vaad contends the logo is a certification mark signifying Rebbe’s sanction. | Merkos/TTAB treat it as a trademark with source-identifying function; licensing controls apply. | Logo is a trademark, not a certification mark. |
| Does laches bar Merkos’s counterclaims? | Vaad argues laches due to lengthy delay (17 years) in asserting counterclaims. | Delay may be excused if good faith or ongoing litigation against others; facts may negate laches. | Presumption of laches applies; fact issues remain regarding good faith and potential defenses. |
| Can Merkos recover money damages for infringement? | Merkos seeks monetary relief for ongoing infringement. | Damages require proof of actual confusion or intent to deceive; laches and facts matter. | Damages not bar as a matter of law; issues of consumer confusion and intent to deceive remain factual. |
| What is the court’s ruling on the PTO’s registration and related motions? | Merkos seeks affirmation of registration; Vaad seeks cancellation. | Vaad seeks cancellation of registration; Merkos cross-moves for affirmance. | PTO registration affirmed; Vaad’s motion denied; Merkos’s cross-motion granted; Vaad/Chanin summary judgment denied on counterclaims. |
Key Cases Cited
- Hermes Int'l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104 (2d Cir. 2000) (intentional infringement affects laches analysis)
- Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) (bad faith by infringer defeats laches defense)
- Cuban Cigar Brands, N.V. v. Upmann Int'l, Inc., 457 F. Supp. 1090 (S.D.N.Y. 1978) (infringement and laches interplay; timing matters)
- In re Thrifty, Inc., 274 F.3d 1349 (Fed. Cir. 2001) (scope of review for PTO decisions; de novo law, substantial evidence fact-finding)
- Dickinson v. Zurko, 527 U.S. 150 (1999) (standards for reviewing agency findings)
- Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988) (administrative record admissible; findings reviewed for substantial evidence)
- Speed Prods. Co. v. Tinnerman Prods., 179 F.2d 778 (2d Cir. 1949) (going-concern transfer implies transfer of goodwill and trademarks)