Van Praagh v. Gratton
993 F. Supp. 2d 293
E.D.N.Y2014Background
- Plaintiff James Van Praagh (California) is a public spiritual medium who has used the name/brand “James Van Praagh” and the surname mark “Van Praagh” in commerce for ~20 years and holds federal registrations for "James Van Praagh."
- Defendant Lynn Gratton (New York), Plaintiff’s sister who changed her surname on marriage decades earlier, began using the names "Lynn Van Praagh" and "Lynn Van Praagh-Gratton" to offer spiritual medium services and registered related domain names and social media pages.
- Plaintiff alleges Defendant’s use caused and is likely to cause consumer confusion and trade on his goodwill, and that her activities constitute trademark infringement, false designation of origin, dilution (federal and NY), unfair competition, and deceptive acts under NY Gen. Bus. Law § 349.
- Defendant moved to dismiss under Fed. R. Civ. P. 12(b)(6); Court limited its review to the complaint and documents incorporated by reference (e.g., Defendant’s website).
- The court found Plaintiff adequately alleged: valid marks (registered James Van Praagh; unregistered Van Praagh with alleged secondary meaning), likelihood of confusion, and likelihood of dilution; but dismissed the § 349 deceptive-practices claim for failing to allege public-directed injury beyond typical trademark confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement (Lanham Act § 1114) | Van Praagh is a valid (registered) mark and Defendant's use of "Lynn Van Praagh" is likely to confuse consumers | Defendant sought dismissal, disputing allegations and facts | Denied — complaint plausibly alleges valid mark and likelihood of confusion |
| False designation of origin / unfair competition (Lanham Act § 1125 & NY common law) | Unregistered surname "Van Praagh" has acquired secondary meaning; defendant's use likely to cause confusion | Defendant argued no actionable mark/use | Denied — complaint plausibly alleges secondary meaning and likelihood of confusion |
| Trademark dilution (15 U.S.C. § 1125(c) and NYGBL § 360-l) | Marks are famous/distinctive; defendant's use may blur/tarnish the marks | Defendant argued insufficient fame/impact to plead dilution | Denied — pleaded facts suffice at 12(b)(6) stage to state dilution claims |
| NYGBL § 349 deceptive acts and practices | Defendant's conduct deceives consumers and harms Plaintiff | Defendant argued dismissal appropriate (general confusion only) | Granted — complaint alleges only ordinary trademark confusion, no public-directed injury required by § 349 |
Key Cases Cited
- DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104 (2d Cir. 2010) (Rule 12(b)(6) generally limits court to the complaint)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading standard: well-pleaded facts vs. legal conclusions)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard for dismissals)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (factors for likelihood of confusion)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (discussion of dilution by blurring and tarnishment)
- Maurizio v. Goldsmith, 230 F.3d 518 (2d Cir. 2000) (elements of a NYGBL § 349 claim)