The opinion of the court was delivered by: Block, Senior District Judge:
In 2010, the United States Patent and Trademark Office ("PTO") approved the application of Merkos L'Inyonei Chinuch, Inc. ("Merkos") to register a trademark for use on books and other publications distributed principally within the Lubavitcher community of Hasidic Jews. See Vaad L'Hafotzas Sichos, Inc. v. Kehot Publ'n Soc'y, 2010 WL 3597243 (TTAB Aug. 30, 2010). Vaad L'Hafotzas Sichos ("Vaad") opposed the application and seeks judicial review of the PTO's decision. Vaad moves for a summary judgment canceling the registration; Merkos cross-moves for a summary judgment affirming it.
In addition to defending the PTO's decision, Merkos counterclaims for infringement, dilution and unfair competition; it makes the same claims against Zalman Chanin ("Chanin"), Vaad's president and principal owner, and seeks both injunctive and monetary relief. On those claims, Vaad and Chanin have moved for summary judgment.
For the following reasons, the Court affirms the PTO's decision and denies Vaad and Chanin's motion for summary judgment on Merkos's counterclaims.
The Lubavitcher community has its roots in Tsarist Russia. In the midst of World War II, its then-leader-or Rebbe-Rabbi Joseph Isaac Schneersohn ("the Previous Rebbe"), emigrated to the United States. Today, the movement is headquartered in Crown Heights, Brooklyn.
Shortly after arriving in the United States, the Previous Rebbe founded the Kehot Publication Society ("Kehot"). A year later, he founded Merkos to provide broader educational services to the Lubavitcher community. The Previous Rebbe installed his son-inlaw, Rabbi Menachem Mendel Schneerson ("the Rebbe"), as Merkos's president.
At its first meeting in 1942, Merkos's board of directors resolved to take over direction of Kehot, an unincorporated entity. The resolution reads as follows:
Whereas "KEHOT" has been engaged in the publication of literature of great value both in the religious and pedagogic field, and Whereas it appears that such activity would well fit into the program of MERKOS L'INYONEI CHINUCH, INC. and it would be for the best interests of MERKOS L'INYONEI CHINUCH, INC. to assume and adopt the continuance of these publications hereafter, and Whereas Rabbi Joseph I. Schneersohn has signified his willingness to and does give and assign to MERKOS L'INYONEI CHINUCH, INC. the right to use the trade names of "KEHOT" and "KEHOT PUBLICATION SOCIETY" in publishing, advertising and distributing religious and pedagogic literature, Now, therefore, it is resolved that the proposal as set forth above be and the same hereby is approved and the Executive Committee is directed to carry out the terms of this resolution in all respects.
Vaad, 2010 WL 3597243, at *5.
The resolution did not expressly mention the Kehot logo. That logo was first used in 1941, the same year Kehot was founded. At the center of the logo is a circle containing the word Kehot in Hebrew (;@%8). Kehot is an acronym for %9&; $&% *198 (Karnei Hod Torah), which means "rays of the Torah's glory" or, with some poetic license, "Torah is a majestic crown." That phrase runs around the top of the circle; around the bottom runs :)*&&!"&*- (Lubavitch). Surmounting everything are the words .*952 ;!7&% (Hotzaat Seforim)-"book press" or, more loosely, "publishing house." In 1960, Merkos registered the logo as a trademark under New York law.
During the Previous Rebbe's tenure, several entities apart from Kehot used the logo. Some, like Kehot, were part of the movement's umbrella organization; others were independent. All use of the logo was contingent on the Previous Rebbe's approval. This practice continued when the Rebbe succeeded his father-in-law in 1951.
In 1958, and again in 1962, the independent Lubavitch Youth Organization published a weekly pamphlet containing the Rebbe's sichos (talks or sermons). Vaad was formed in 1967 to provide the same service in a more regular manner. Indeed, Vaad's full name means "Council for Distribution of the Sichos."
Thus, between 1967 and 1994, Vaad submitted its weekly pamphlets to the Rebbe. Upon receiving his approval, Vaad would publish and distribute the pamphlets under the Kehot logo. In addition, the Rebbe put Vaad in ...