The opinion of the court was delivered by: Gerard E. Lynch, District Judge
Plaintiff AARP commenced this action against defendants 200 Kelsey Associates, LLC, and its principal shareholder and managing member, Michael Reich, alleging trademark infringement and related causes of action in violation of the Lanham Act, 15 U.S.C. § 1051 et seq., and New York state law. Plaintiff seeks, inter alia, permanent injunctive relief and a declaration that its federal trademark registration is valid and has been (and will be) infringed by defendants. Pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6), defendants now move to dismiss the complaint for lack of jurisdiction and for failure to state a claim. The motion will be denied.*fn1
The facts set forth below are based on the allegations of the complaint, which are assumed to be true for purposes of resolving this motion to dismiss.
Plaintiff AARP is a non-profit organization dedicated to addressing the needs, and promoting the interests, of persons age 50 and older. (Compl. ¶ 8.)*fn2 With a membership exceeding 35 million, it is the largest membership organization in the United States for persons in that age category. (Id. ¶¶ 8-9.) In 1958, AARP launched its flagship publication, Modern Maturity magazine. (P. Mem. 1.) In 1962, AARP obtained a federal trademark registration for the Modern Maturity mark. (Id. 3; cf. Compl. ¶ 12.) Modern Maturity was provided to AARP members for some 45 years. (Compl. ¶ 10; P. Mem. 1, 3.) During that time, AARP invested hundreds of millions of dollars in the Modern Maturity mark. (Compl. ¶ 13.) While AARP changed the name of its publication to AARP The Magazine in 2003, it owns and uses domain names containing the Modern Maturity mark, provides back issues of Modern Maturity on its website, and employs the Modern Maturity mark in connection with various other products and services. (Id. ¶¶ 13-15.)
Defendants 200 Kelsey Associates and Michael Reich seek to launch a new magazine called Modern Maturity, which is also intended for senior citizens. (Id. ¶ 20; P. Mem. 3.) In preparation for this launch, they have contacted potential publishers, generated written business plans concerning the design and sale of the magazine, and engaged in extensive market analysis. (Compl. ¶ 23; P. Mem. 3-4.) Defendants have also filed an intent-to-use trademark application with the United States Patent and Trademark Office ("PTO") for "Modern Maturity," a "[m]agazine published periodically in the field of mature lifestyles." (Compl. ¶ 20.) This application included a sworn declaration attesting defendants' bona fide intent to use the Modern Maturity mark in commerce. (Id. ¶ 23.)
The PTO rejected defendants' application on the ground that the mark they sought to register was confusingly similar to AARP's registered Modern Maturity mark. (Id. ¶ 20.) Following that decision, defendants petitioned the Trademark Trial and Appeal Board ("TTAB") to cancel plaintiff's registration of the Modern Maturity mark, arguing that the mark has been abandoned. (Id. ¶ 21; D. Mem. 1.) Proceedings on that petition were suspended pending the outcome of this action. (Compl. ¶ 21; P. Mem. 12.)
On January 5, 2006, AARP brought this action, alleging trademark infringement and various related causes of action in violation of the Lanham Act and New York state law. Defendants consented to entry of a preliminary injunction enjoining defendants' use or attempted use of the Modern Maturity mark, which was duly entered on March 7, 2006. On April 20, 2006, defendants moved pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6) to dismiss the complaint for lack of jurisdiction and for failure to state a claim.
Defendants argue that because plaintiff has not alleged that they have actually published or begun selling their Modern Maturity magazine, plaintiff can demonstrate neither the existence of a case or controversy sufficient to confer jurisdiction on this Court (D. Mem. 12-13), nor the "use in commerce" of the Modern Maturity mark required to state a claim for trademark infringement and the related causes of action alleged in the complaint. (Id. 2, 3-8.) Defendants further argue that, absent subject matter jurisdiction over plaintiff's trademark infringement and related claims, plaintiff's request for a declaration of the validity of its trademark registration is improper. (D. Mem. 9-10.)
In opposition, plaintiff contends that it need not wait to seek relief until defendants' magazine actually hits the newsstand. Rather, it need only "allege sufficient facts, including reasonable inferences that can be drawn from those facts, which show that defendant[s] ha[ve] used the allegedly infringing mark in commerce or that such use is imminent and impending."
(P. Mem. 2.) Because plaintiff has alleged that defendants "are actively seeking licensees to publish a magazine called 'Modern Maturity'" and "have conducted [an] extensive analysis of the publishing industry" in preparation for the launch of such a publication (Compl. ¶ 23), it argues that it has satisfied the relevant standards ...