United States District Court, E.D. New York
January 31, 2003
Michael I. KROLL, Plaintiff,
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
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
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
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 interests of justice require transfer.
I. Dismissal Motion
The court denies the motion to dismiss. When Plaintiff
commenced this lawsuit it was reasonable for him to name
Lieberman and Greenberg as individual defendants. The public
filing in the PTO indicates that the mark is owned by a
partnership comprised of the named defendants. A copy of that
filing was provided to Plaintiff by Defendants as an exhibit to
their cease and desist letter, which letter was written on
Greenberg and Lieberman letterhead. Under these circumstances,
Plaintiff reasonably assumed that Greenberg and Lieberman owned
the mark and were the proper defendants.
It appears, however, that the mark is now owned by
Liebeenberg, Inc., a corporation. Having been recently presented
with this information, Plaintiff seeks leave to amend his
complaint to name this entity as the defendant herein. Rather
than dismiss this matter, the court grants Plaintiff's request
to amend his complaint to name the corporate defendant.
II. Transfer Motion
A. General Principals
Defendants move for a change of venue pursuant to
28 U.S.C. § 1404 ("Section 1404"). Section 1404 allows for transfer for the
convenience of the witnesses or parties and in the interests of
justice. 28 U.S.C. § 1404(a). The burden on such a motion is on
the party seeking transfer. Schwartz v. Marriott Hotel Servs.,
Inc., 186 F. Supp.2d 245, 248 (E.D.N.Y. 2002); Jones v. United
States, 2002 WL 2003191 *2 (E.D.N.Y. August 26, 2002); Longo
v. Wal-Mart Stores, Inc., 79 F. Supp.2d 169, 170-71 (E.D.N.Y.
When considering whether the discretion to transfer should be
exercised, the court considers first whether venue is proper in
the proposed transferee district. Longo, 79 F. Supp.2d at 171;
Laumann Mfg. Corp. v. Castings U.S.A., Inc., 913 F. Supp. 712,
720 (E.D.N.Y. 1996); see 28 U.S.C. § 1404(a) (allowing for
transfer to any district where the action "might have been
brought"). If the proposed venue is proper, the court then
considers whether transfer will serve the convenience of
witnesses and parties and is in the interests of justice.
To make this determination, the court looks to several
factors, including: (1) convenience of witnesses; (2)
convenience of parties; (3) locus of operative facts; (4)
availability of process to compel the attendance of unwilling
witnesses; (5) location of relevant documents and other sources
of proof; (6) relative means of the parties; (7) relative
familiarity of the forum with the governing law; (8) weight
accorded to the plaintiff's choice of forum and (9) the
interests of justice. See, e.g., Schwartz, 186 F. Supp.2d at
248; Longo, 79 F. Supp.2d at 171.
The court is mindful that Section § 1404(a) protects those
involved in litigation from needless inconvenience and costs.
Castaneira v. Gannon, 1999 WL 1487630 *3 (E.D.N.Y. Dec. 16,
1999). Nonetheless, deference is to be given to plaintiff's
choice of forum and transfer
[244 F. Supp.2d 103]
should be ordered only if the balance of conveniences weighs
strongly in favor of the change of forum. See Innovations
Enterprises Ltd. v. Haas-Jordan Co., Inc., 2000 WL 263745 *2
(E.D.N.Y. Jan. 4, 2000); Pall Corp. v. PTI Tech., Inc.,
992 F. Supp. 196, 200 (E.D.N.Y. 1998). Where transfer would merely
shift the inconvenience from one party to the other, plaintiff's
choice of forum is not to be disturbed. Innovations
Enterprises, 2000 WL 263745 *2; Pall Corp., 992 F. Supp. at
B. Transfer Is Not Warranted
Defendants' motion to transfer this matter to the Southern
District of New York is supported only by the argument that it
is easier for them to travel to Manhattan than to Central Islip.
The principal argument relies on the asserted fact that there is
often traffic on the Long Island Expressway and it is somehow
"unjust" to require Defendants to "schlep" all the way "out to
the Eastern District."
In support of his choice of venue, Plaintiff argues that his
principal place of business is in Nassau County, Defendants'
cease and desist letter was written to Plaintiff at his office
in that county and Defendants have advertised their services
within this District.
Aside from the excessive schlep argument, Defendants have
failed to articulate a single reason why transfer is warranted.
They have not identified particular witnesses, the location of
documents or other sources of proof. Nor have Defendants
addressed any of the other issues referred to above that are
relevant to the transfer issue. Instead, the motion stands or
falls on the issue of traffic on the Long Island Expressway.
That traffic (which, incidentally, would likely be against the
usual west to east flow) is insufficient to warrant transfer and
the motion is therefore denied.
It is worth noting that the trip that Defendants would impose
on Plaintiff, the east to west trip from Syosset to Manhattan,
is also a schlep. Such a trip can take hours. Additionally,
Defendants may be surprised to learn is that airplanes have been
known to land in an airport that is conveniently located way
"out in the Eastern District." That airport is located in Islip,
New York. It is approximately a twelve minute drive from that
airport to the Central Islip Federal Courthouse not a schlep
at all. Indeed, the ride from the Islip airport to the Long
Island Courthouse is most pleasant when compared with the
commute from New York's Laguardia or Kennedy airports to the
Southern District Courthouse in Manhattan.
As noted above, Plaintiff's forum choice is not to be
disturbed unless justice weighs heavily in favor of transfer.
Here, it does not. In light of the foregoing, the court holds
that transfer of this matter pursuant to 28 U.S.C. § 1404(a) is
For the foregoing reasons, Defendants' motion to dismiss the
complaint is denied. Plaintiff is granted twenty days from the
date of this order in which to amend his complaint to name as a
defendant the corporation that owns the trademark at issue. The
motion to transfer this matter to the Southern District of New
York is also denied. If they have not already done so, the
parties are ordered to contact the Magistrate Judge assigned to
this matter so that discovery may proceed.
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