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KROLL v. LIEBERMAN

January 31, 2003

Michael I. KROLL, Plaintiff,
v.
Stevan LIEBERMAN and Michael Greenberg d/b/a "Greenberg & Lieberman," Defendants.



The opinion of the court was delivered by: WEXLER, District Judge.

MEMORANDUM AND ORDER

This is a declaratory judgment action brought to decide the parties' respective rights to use certain names in connection with the advertising of their legal services. Presently before the court is the motion of Defendants to dismiss the case pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure or, in the alternative, to transfer this matter to the United States District Court for the Southern District of New York.

  BACKGROUND

 I. The Parties and the Allegations of the Complaint

  Plaintiff and Defendants are attorneys practicing law in the field of patents and trademarks. Plaintiff maintains an office within the Eastern District of New York. Defendants' office is located in Maryland. At issue here is the scope and validity of Defendants' trademark "A Legal Services." This trademark was registered in 1997 with the United States Patent and Trademark Office (the "PTO"). Listed as the owner and registrant of the trademark is: "Liebeenberg." Liebeenberg is listed as a partnership that is comprised of Stevan Lieberman and Michael Greenberg.

  The law firm of Greenberg and Lieberman has used the trademark "A Legal Services" to advertise their law firm in telephone directories. Greenberg and Lieberman appear to have a nation-wide practice and advertise in various editions of the "Yellow Pages," including, according to Plaintiff, within the Eastern District of New York. Not surprisingly, Defendants' use of the term "A" allows their law firm to be listed first under the relevant listing in telephone directories.

  At some time prior to commencement of this lawsuit, Plaintiff began advertising his legal services by use of the term "A Kroll Michael." Use of the "A " before the listing of his name allows Plaintiff's advertisement to appear prior to the "A " listing employed by Greenberg and Lieberman. Alleging that Kroll's use of "A " infringes on its protected right to use "A," Defendant Stevan Lieberman wrote to Kroll demanding that he immediately cease and desist from all use of the "A " mark or be faced with "immediate and severe legal action." Lieberman's letter to Kroll was addressed to Kroll's Syosset, New York office. Faced with the prospect of impending legal action, Kroll commenced this declaratory judgment action to clarify the parties' rights.

 II. Defendants' Motion

  Defendants seek dismissal of this case on the ground that Plaintiff has named the wrong parties as defendants. According to Defendants, Liebeenberg, the owner of the trademark at issue, is a corporation, not a partnership and therefore it was improper for Plaintiff to name Greenberg and Lieberman as individual defendants. Defendants explain that although Liebeenberg was a partnership at the time of the trademark filing, that entity has now achieved corporate status and has licensed use of the mark to Greenberg and Lieberman.

  In the event that this case is not dismissed, Defendants seek, in the alternative, an order transferring this matter to the United States District Court for the Southern District of New York. Transfer is sought pursuant to 28 U.S.C. § 1404(a), for the convenience of parties and witnesses and in the interests of justice.

  Plaintiff opposes the dismissal motion on the ground that Liebeenberg was listed as a partnership on the relevant trademark filing, with Defendants Lieberman and

[244 F. Supp.2d 102]

      Greenberg listed as the partners. In the event that this court holds that the proper party defendant is Liebeenberg, Inc. Plaintiff seeks to amend his complaint to name the corporate defendant rather than face outright dismissal.

  Plaintiff opposes the transfer motion on the ground that venue is proper here and Defendants have set forth no facts indicating that the ...


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