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

United States District Court, S.D. New York

December 16, 2014

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

For Cross Commerce Media, Inc., Plaintiff: Jason Andrew Roth, Marc Joseph Rachman, Neal Howard Klausner, Davis & Gilbert LLP, New York, NY; John Mark Lane, Koo Larrabee Lau-Kee & Lane, L.L.P, White Plains, NY.

For Collective, Inc., Defendant: Eric J. Andalman, PRO HAC VICE, Dentons U.S. LLP (Chicago), Chicago, IL; Samuel Fifer, PRO HAC VICE, Dentons Us LLP, Chicago, IL; David Robert Baum, Dentons U.S. LLP (NY), New York, NY.

For Collective, Inc., Counter Claimant: Eric J. Andalman, PRO HAC VICE, Dentons U.S. LLP (Chicago), Chicago, IL; Samuel Fifer, PRO HAC VICE, Dentons Us LLP, Chicago, IL; David Robert Baum, Dentons U.S. LLP (NY), New York, NY.

For Cross Commerce Media, Inc., Counter Defendant: Jason Andrew Roth, Marc Joseph Rachman, Neal Howard Klausner, Davis & Gilbert LLP, New York, NY.

MEMORANDUM DECISION & ORDER

KATHERINE B. FORREST, United States District Judge.

On August 21, 2014, this Court granted a motion for summary judgment by plaintiff Cross Commerce Media, Inc. (" Cross Commerce") seeking a declaration of non-infringement of the registered mark of defendant Collective, Inc. (" CI"). Now pending before the Court are two final motions, the resolution of which terminates this action. First, Cross Commerce seeks an order cancelling CI's trademark registrations for " Collective Network" (Reg. No. 3538489) and " Collective Video" (Reg. No. 3671913), and requiring that the term " collective" be disclaimed from CI's trademark registration for " C Collective The Audience Engine" (Reg. No. 3929580). Second, Cross Commerce moves for attorneys' fees and sanctions.

For the reasons set forth below, and incorporating the Court's prior decisions in this matter for facts and context, the Court GRANTS Cross Commerce's motion as to the registrations, and directs the Patent and Trademark Office (" PTO") to cancel the registrations for " Collective Video" and " Collective Network, " and to disclaim the term " collective" from the mark " C Collective the Audience Engine." In addition, the Court GRANTS Cross Commerce's motion for attorneys' fees, DENIES its motion for sanctions as essentially duplicative, and DENIES AS MOOT the parties' pending Daubert motions.

I. THE REGISTRATIONS

Cross Commerce commenced this lawsuit after discussions between them regarding their respective uses of the word " collective" in their businesses' names fell apart and CI threatened suit. CI counterclaimed for the mirror-image relief sought by Cross Commerce. Despite its aggressive pre-litigation position, CI did what this Court would characterize as " very little indeed" to develop its position with regard to its use of the word " collective" in connection with a series of marks, particularly with regard to " C Collective the Audience Engine." As the Court has discussed at length in prior decisions, CI failed to put forward any real evidence showing that its mark was more than merely descriptive: it failed to submit any marketing materials, survey research, or even an affidavit supporting suggestiveness. CI pursued this course of action even after this Court informed it specifically that it would need to provide something along these lines to avoid summary judgment. For whatever reason, it did not.

The Court's summary judgment opinion sets forth the basis for its decision that CI's mark lacked secondary meaning and that the word " collective" is not protectable. For those same reasons, the Court may, pursuant to the statutory authority provided in 15 U.S.C. § 1119, require that the PTO take certain action with regard to CI's marks.

In that regard, the Court's August 2014 decision leads inexorably to the Court's determination that the disclaimer of the word " collective" in the mark " C Collective the Audience Engine" is required. CI makes frivolous arguments that the Court is somehow divested of its ability to require such relief based on its August decision and its elimination of a case or controversy thereby. This makes no sense. The Court of course has the power to do precisely that which the statute authorizes it to do.

The marks " Collective Network" and " Collective Video" were part of the original complaint filed in April 2013. Indeed, the registrations relating to those marks were appended to that complaint. (ECF No. 1 ex. B.) As both parties have noted in the briefing on the instant motion, there was deposition testimony on the use of those marks (or the lack thereof) in commerce. That the record focused more on one of the marks--" C Collective the Audience Engine" --and not the others, does not mean that Cross Commerce withdrew its claim as to those marks. It did not.

In the context of this motion, Cross Commerce asserts that these two marks have been abandoned. Its motion in this regard is akin to one for summary judgment--asserting that as a matter of law it is entitled to judgment on these marks. However, it has not cast its motion as such--it has not, for instance, submitted a Local Rule 56.1 statement. Nevertheless, the parties have had a full opportunity to bring to the Court any facts and argument relevant to whether these two marks have been used in commerce or abandoned. There is no suggestion by CI that it has any evidence to offer in this regard beyond that already reviewed by the Court.

Accordingly, the undisputed evidence reveals that CI has not used the marks " Collective Video" or " Collective Network" in commerce. Therefore, as a matter of law it has by clear and convincing evidence abandoned them, which is grounds for cancellation of registration.[1] 15 U.S.C. § 1064; see also Citigroup Inc. v. City Holding Co., No. 99 Civ. 10115 (RWS), at *44-46 (S.D.N.Y. Feb. 7, 2013) (A registration may be cancelled at any time if it has been abandoned. . . . [A]bandonment of a mark must be proven by clear ...


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