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Cross Commerce Media, Inc. v. Collective, Inc.

United States District Court, S.D. New York

March 24, 2014

CROSS COMMERCE MEDIA, INC., Plaintiff/Counterclaim Defendant,
v.
COLLECTIVE, INC., Defendant/Counterclaim Plaintiff.

OPINION & ORDER

KATHERINE B. FORREST, District Judge.

On April 25, 2013, Cross Commerce Media, Inc. ("CCM") brought this declaratory judgment action against Collective, Inc. ("Collective"). (Compl. ¶ 1, ECF No. 1.) CCM seeks a declaration that its use of the mark "Collective[i]" does not infringe any of Collective's three trademarks that use the word "collective"- "Collective Network, " "Collective Video, " and "C Collective The Audience Engine" (hereinafter, the "Collective Marks"). (Id. ¶¶ 1, 10.)[1]

On May 16, 2013, Collective answered the complaint and counterclaimed against CCM for infringement of unregistered and registered trademarks, pursuant to 15 U.S.C. §§ 1125(a) and 1114, and unfair competition under New York law. (Answer & Counterclaims ¶¶ 82-92, ECF No. 5.)

Discovery is ongoing and this matter is scheduled for trial on July 28, 2014. On December 18, 2013, CCM moved for partial summary judgment on two issues: (1) that the word "collective, " on a stand-alone basis and as used by Collective, is descriptive, and (2) that, even if Collective can establish that it has a valid trademark in "collective" as a stand-alone mark, any such rights are commercially weak because of extensive third-party usage of the mark. (CCM Mem. of Law at 1, ECF No. 33.) On January 21, 2014, Collective opposed the motion on the grounds that the word "collective" is not merely descriptive, and that the issue of the strength of the mark is not ripe for decision at this stage in the litigation (Collective Opp. at 2-3, ECF No. 37), and moved to continue or defer the motion pursuant to Federal Rule of Civil Procedure 56(d) in light of ongoing discovery (Collective 56(d) Motion ¶ 1, ECF No. 40). CCM's motion for partial summary judgment became fully briefed on January 30, 2014, and Collective's motion pursuant to Rule 56(d) became fully briefed on February 11, 2014.

For the reasons set forth below, CCM's motion for partial summary judgment is GRANTED in part and DENIED in part, and Collective's motion pursuant to Rule 56(d) is GRANTED in part and DENIED in part.

I. FACTS

In connection with its motion for partial summary judgment, CCM submitted a statement of material facts pursuant to Local Civil Rule 56.1 ("CCM SOF") (ECF No. 32), a response to Collective's statement of additional facts pursuant to Local Civil Rule 56.1 ("CCM RSOF") (ECF No. 46), and an affidavit from Rebecca Morse ("Morse Aff.") (ECF No. 34). Collective submitted a combined response to CCM's statement of material facts and statement of additional facts pursuant to Local Civil Rule 56.1 ("Col. RSOF" and "Col. SOF, " respectively) (ECF No. 39), and a declaration from Edward Dandridge ("Dandridge Decl.") (ECF No. 38). In support of its motion pursuant to Rule 56(d), Collective submitted two declarations from Eric Andalman ("[Date] Andalman Decl.") (ECF Nos. 41, 51); in opposition, CCM submitted a declaration from Marc Rachman ("Rachman Decl.") (ECF No. 49).

The following facts are undisputed unless otherwise noted.

Collective has registered the following marks with the U.S. Patent & Trademark Office ("PTO"): "Collective Network, " "Collective Video, " and "C Collective The Audience Engine." (Col. RSOF ¶ 2.) Collective describes these marks as involving Internet-based advertising networks in its registrations with the PTO. (Id. ¶¶ 3-6.) These registrations further describe the advertising networks as, inter alia, connecting online publishers with online advertisers for buying and selling online advertisements, or connecting online advertisers with online publishers of video content. (Id. ¶¶ 4-6.) Collective does not own a trademark registration in the stand-alone word "collective."

CCM is in the business of data management, analytics, and modeling. (See Col. SOF ¶ 9; CCM Mem. of Law at 3.) In January 2011, it began using the mark "Collective Intelligence, " for which it had previously filed an Intent to Use ("ITU") application with the PTO. CCM obtained a word mark for "Collective Intelligence" in May 2012. CCM also filed ITU's for "Collective IQ, " "CIQ, " and "Collectivei" in March 2011. In late 2011, CCM began using the mark "Collective[i]."[2]

There is no allegation in this case that CCM has used any of the Collective Marks. Rather, the issue before this Court is whether Collective has a right to exclude CCM from use of the word "collective" in its mark.

A search of the PTO's Trademark Electronic Search System ("TESS") for the word "collective" returned 534 results as of November 26, 2013. (CCM SOF ¶ 8.) In 186 instances, the PTO has either required disclaimer of the use of the word "collective" as being descriptive or rejected a mark application using the word "collective" on the same basis. (Id. ¶ 14.) The word "collective" is used in the name of over 7, 000 businesses registered in 45 states across the country as of December 9, 2013. (Id. ¶ 9.) There are over 500 entities in New York and over 3, 000 in California that use the word "collective" in their name. (Id. ¶ 10.) There are over 25, 000 Internet domain names that contain the word "collective." (Id. ¶ 12.) There are more than a dozen companies in the digital advertising and marketing field that also use the word "collective" in connection with their name and/or goods and services. (Id. ¶ 13.)

There have been a handful of instances in which Collective has received inquiries relating to CCM's business and the "Collective[i]" mark. (See Dandridge Decl. ¶ 16.)

As of the filing of these motions, discovery was scheduled to close on April 21, 2014; by order dated February 24, 2014, this deadline was extended to May 30, 2014. (See ECF Nos. 29, 54.) As of the filing of these motions, the parties had exchanged less than 3, 000 pages of hard-copy documents but no "electronic" documents, and had not taken any depositions. (1/21/14 Andalman Decl. ¶¶ 4-5; 2/11/14 Andalman Decl. ¶ 2; Rachman Decl. ¶ 4.) The parties had not disclosed experts or presented expert reports. (1/21/14 Andalman Decl. ¶ 6.) According to Collective, it needs additional discovery (particularly expert discovery, in the form of survey research) in order to develop evidence relating to the strength of ...


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