The opinion of the court was delivered by: Ward, District Judge.
Plaintiff Beth Cline cross-moves for summary judgment pursuant
to Rule 56, Fed.R.Civ.P. Defendants 1-888-PLUMBING Group, Inc.
("Plumbing Group"), Frank Campisi, and Bruni & Campisi Plumbing
and Heating, Inc. ("BCPHI") cross-move to amend their pleadings
pursuant to Rule 15(b), Fed.R.Civ.P., and for summary judgment.
For the following reasons, Plaintiffs cross-motion is denied and
Defendants' cross-motion is granted in part and denied in part.
The Amended Complaint alleges that Defendants infringed on
Plaintiff's registered service mark "1-800-PLUMBING" in violation
of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); diluted her
allegedly famous mark in violation of the Federal Trademark
Dilution Act of 1995 ("FTDA"), 15 U.S.C. § 1125(c); committed
cyberpiracy in violation of the Anticybersquatting Consumer
Protection Act ("ACPA"), 15 U.S.C. § 1125(d); caused a likelihood
of injury to her business reputation and dilution of her
allegedly distinctive mark in violation of New York General
Business Law ("N.Y.Gen.Bus.Law") § 360 et seq.; and performed
deceptive acts and practices in violation of N.Y. Gen. Bus. Law
§§ 133 and 349 et seq.*fn1 The claims arise out of Defendants'
alleged use of the toll-free telephone number "1-888-PLUMBING,"
and the registration and alleged use of eight internet domain
names: www.1-800-plumbing.com, www.800-plumbing.com,
www.800plumbing.com, www.888-plumbing.com, www.888plumbing.com,
www.1-888-plumbing.com, www.tripleeightplumbing.com, and
In February 1992, Plaintiff began using as her business
telephone number, and continues to use, the toll-free telephone
number 1-800-758-6246, corresponding to 1-800-PLUMBING. She filed
the mark 1-800-PLUMBING with the Patent and Trademark Office
("PTO") in February 1992. Over one year later, on June 1, 1993,
the PTO placed the service mark on the principal register.*fn2
Since 1992 Plaintiff has advertised and promoted 1-800-PLUMBING
by, among other things, affixing the mark to her truck,
distributing flyers and business cards at events, and advertising
on local radio and in newspapers. The amount of advertising by
Plaintiff in these various media is in dispute.
Campisi is the sole officer and director of Plumbing Group, a
New York corporation incorporated on April 29, 1998. He is also
the secretary, treasurer, and director of BCPHI, a New York
corporation incorporated on October 4, 1979.
Someone placed a telephone call from Campisi's residence to
1-800-PLUMBING on November 27, 1996. The parties do not agree on
who made the call or what was discussed. Ten days later, on
December 7, Campisi registered in his own name the eight subject
internet domain names with Network Solutions, Inc. ("Network
Solutions"), a company that processes and maintains records of
domain name registrations. On January 8, 1997, another telephone
call was placed from Campisi's residence to 1-800-PLUMBING.
Again, the subject matter of the conversation and the identity of
the caller are in dispute.
Plaintiff filed a complaint with Network Solutions in April
1997, alleging that Campisi's domain name 1-800-plumbing.com
infringes on her registered service mark. Network Solutions
initiated an internal proceeding pursuant to its Domain Name
Dispute Policy and sent Campisi notification of the proceeding on
September 3, 1998. The proceeding is "on-hold" pending resolution
of this case.
On May 6 and 7, 1998 and January 12, 1999, additional telephone
calls were made from Campisi's residence to 1-800-PLUMBING, the
subject matter of which is again disputed. During the months of
June and July 1998, Plaintiff sent and Campisi received "cease
and desist" letters which included a copy of her registration
certificate from the PTO.
Plumbing Group entered into a contract on August 1, 1998 with
Tele-Name Communications, Inc. ("Tele-Name") for the use of the
toll-free telephone number 1-888-758-6246, which corresponds to
1-888-PLUMBING. The contract listed the local telephone number of
BCPHI's offices as the "Terminating Telephone Number," the number
to which calls made to 1-888-PLUMBING would be routed. Initially,
all calls made to 1-888-PLUMBING were routed to BCPHI's offices;
at some point thereafter they were routed to Plumbing Group. The
contract also permitted Tele-Name to post a web page on the
internet promoting 1-888-PLUMBING for an additional fee. For a
period of time Tele-Name did post such a web page on the
internet. However, whether Defendants
authorized or otherwise caused the web page to be posted is in
In November and December 1998, and in January 1999, articles
appeared in two mechanical contracting industry magazines
containing interviews with Campisi. In the articles Campisi
described Plumbing Group's plans to market and license the
toll-free number 1-888-PLUMBING. The parties dispute whether
Defendants caused the articles to be printed.
I. Standard for Summary Judgment
Summary judgment is appropriate where the moving party has
established that "there is no genuine issue as to any material
fact and that the moving party is entitled to a judgment as a
matter of law." Fed.R.Civ.P. 56(c). On a motion for summary
judgment, the court must determine "whether the evidence presents
a sufficient disagreement to require submission to [the
factfinder] or whether it is so one-sided that one party must
prevail as a matter of law." Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In
making this determination, the court "must view the evidence in
the light most favorable to the non-moving party and draw all
reasonable inferences in its favor." Consarc Corp. v. Marine
Midland Bank, N.A., 996 F.2d 568, 572 (2d Cir. 1993).
Initially, the moving party must show that there is "an absence
of evidence to support the nonmoving party's case." Celotex
Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d
265 (1986). Once the moving party has carried its burden under
Rule 56, the non-moving party must set forth "specific facts
showing that there is a genuine issue for trial." Fed.R.Civ.P.
56(e). The non-moving party is required to introduce evidence
beyond the mere pleadings to show that there is an issue of
material fact concerning "an element essential to that party's
case, and on which that party will bear the burden of proof at
trial." Celotex, 477 U.S. at 322, 106 S.Ct. 2548.
II. Infringement Under § 32(1) of the Lanham Act
Plaintiff cross-moves for summary judgment, claiming that
Defendants infringed upon her registered service mark
1-800-PLUMBING in violation of § 32(1) of the Lanham Act,
15 U.S.C. § 1114(1). Defendants cross-move for summary judgment,
seeking dismissal of Plaintiff's § 32(1) claim and cancellation
of her registered mark. Section 32(1) states:
(1) Any person who shall, without the consent of
the registrant —
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale,
distribution, or advertising of any goods or services
on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive;
(b) reproduce, counterfeit, copy, or colorably
imitate a registered mark and apply such
reproduction, counterfeit, copy, or colorable
imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to
be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising
of goods or services on or in connection with which
such use is likely to cause confusion, or cause
mistake, or to deceive,
shall be liable in a civil action by the registrant
for the remedies hereinafter provided.
A. Validity of Plaintiff's Registered Mark
Plaintiff relies on her registration with the PTO for the
validity of her mark. Registration with the PTO provides "prima
facie evidence that the mark is registered and valid (i.e.,
protectible), that the registrant owns the mark, and that the
registrant has the exclusive right to use the mark in commerce."
Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc.,
192 F.3d 337, 345 (2d Cir. 1999); see also 15 U.S.C. § 1115(a). However,
registration does not "preclude another person from proving any
legal or equitable defense or defect . . . which might have been
asserted if such mark had not been registered."
15 U.S.C. § 1115(a). Defendants here assert that Plaintiff's mark
1-800-PLUMBING is invalid, arguing that it lacks the requisite
distinctiveness to be afforded trademark protections, and
alternatively, that Plaintiff abandoned the use of her mark.
The level of protection accorded to a mark is governed by the
crucial trademark concept of "distinctiveness," which "places
marks on a ladder reflecting their inherent strength or
weakness." Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215
(2d Cir. 1999). These levels of distinctiveness include, from
most to least protected, fanciful, arbitrary, suggestive,
descriptive, and generic. See Lane Capital Management, 192 F.3d
Fanciful, arbitrary, and suggestive marks are deemed inherently
distinctive and thus are afforded automatic protection under the
Lanham Act. See id. Descriptive marks are not inherently
distinctive, and therefore, gain trademark protection and
eligibility for registration on the PTO's principal register only
after acquiring distinctiveness, or "secondary meaning." See
id. Generic marks "are totally lacking in distinctive quality;
they are not entitled to any protection against infringement,
even if they have become famous as marks." TCPIP Holding Co. v.
Haar Communications, Inc., 244 F.3d 88, 93 (2d Cir. 2001)
(citing Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 10 (2d Cir. 1976)).
In this case, Defendants argue that Plaintiff's mark is or has
become generic. The parties do not dispute that the word
"PLUMBING" and the prefix "1-800" are each generic terms. The
issue is whether, as a whole, the telephone number 1-800-PLUMBING
is generic. "A mark is generic if it is a common description of
products and refers to the genus of which the particular product
is a species." Lane Capital Management, 192 F.3d at 344. A
registered mark may be challenged at any time on the ground that
it has become generic. See, e.g., Park `N Fly, Inc. v. Dollar
Park and Fly, Inc., 469 U.S. 189, 202, 105 S.Ct. 658, 83 L.Ed.2d
582 (1985); 15 U.S.C. § 1064(3).
Without explicitly addressing the issue of genericness, the
Second Circuit has upheld trademark protection for a telephone
number comprised solely of a generic term. In Dial-A-Mattress
Franchise Corp. v. Page, 880 F.2d 675 (2d Cir. 1989),
Dial-A-Mattress had used and promoted the local telephone number
"MATTRES" in its retail mattress business for over ten years. It
then sought an injunction prohibiting
a competitor from using the toll-free number "1-800-MATTRESS." On
grounds of unfair competition, the district court issued an
injunction preventing the competitor's use of 1-800-MATTRESS in
the New York metropolitan area. The Second Circuit upheld the
injunction, finding that "[t]elephone numbers may be protected as
trademarks, and a competitor's use of a confusingly similar
telephone number may be enjoined as both trademark infringement
and unfair competition." Id. at 678. While the court did not
expressly address what level of distinctiveness applied, by
affording trademark protection for the telephone number, the
court implicitly held that it could not have been generic, as
generic marks are never afforded trademark protections. See,
e.g., Abercrombie & Fitch Co., 537 F.2d at 9-10. Therefore, the
MATTRES telephone number could only have been descriptive,
suggestive, arbitrary, or fanciful.
Defendants argue that Trademark Manual of Examining Procedure
("TMEP") § 1209.01(b)(12), which was promulgated in 1994,
subsequent to both the 1989 decision in Dial-A-Mattress
Franchise Corp. and the PTO's 1993 registration of Plaintiff's
mark, now renders her registered mark generic as a matter of law.
That section suggests that a mark cannot be registered if it is
comprised of an area code followed by an otherwise generic term.
See TMEP § 1209.01(b)(12). However, the Court of Appeals for
the Federal Circuit has recently upheld the validity of a
registered mark comprised of the toll-free area code "1-888" and
the generic term "MATTRESS," explicitly rejecting a lower court
decision which had relied on TMEP § 1209.01(b)(12). See In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed.Cir.
2001), rev'g 52 U.S.P.Q.2d 1910 (TTAB 1999).
The Federal Circuit analyzed the mark 1-888-MATTRESS not as the
mechanical combination of two generic terms, but in its entirety
and within the context of its use as a telephone number. See
id. at 1345-46 ("`The commercial impression of a trade-mark is
derived from it as a whole, not from its elements separated and
considered in detail.'" (quoting Estate of P.D. Beckwith, Inc.
v. Commissioner of Patents, 252 U.S. 538, 545-46, 40 S.Ct. 414,
64 L.Ed. 705 (1920))). Noting that the "telephone shop-at-home
service for retail mattresses" is a generic description of a
class of products, or "genus," and that the relevant public does
not equate 1-888-MATTRESS with that genus, the court concluded
that the mark was not generic. See id. Rather, the
1-888-MATTRESS mark referred to the particular service provided
In this case the relevant facts are the same. The mark
1-800-PLUMBING, in its context as a telephone number, is not "a
common description of products . . . refer[ring] to the genus of
which the particular product is a species," Lane Capital
Management, 192 F.3d at 344, and is not understood by the public
to be "a class of shop-at-home telephone" plumbing services. See
In re Dial-A-Mattress Operating Corp., 240 F.3d at 1346.
Instead, the public perceives Plaintiff's mark as identifying her
particular service. Consistent with Dial-A-Mattress Franchise
Corp. v. Page, the Court finds that Plaintiff's ...