United States District Court, S.D. New York
OPINION AND ORDER
JESSE M. FURMAN, District Judge.
This case is the latest in a series of cases filed by Plaintiff Naeem Ahmed, proceeding pro se, alleging infringement of his trademarks. The other seven, which were filed against other parties in the District of Massachusetts, have all been dismissed. In this case, Plaintiff sues Defendant GEO USA LLC ("GEO") alleging trademark infringement and injury to business reputation. (Compl. (Docket No. 1)). Plaintiff seeks a preliminary injunction. (Docket No. 2). Defendant cross-moves, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, to dismiss and for sanctions. (Docket No. 10). For the reasons explained below, Defendant's motion to dismiss is granted and its motion for sanctions is denied; in light of the dismissal of the Complaint, Plaintiff's motion for a preliminary injunction is denied as moot.
Generally, in considering a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6), courts are limited to the facts alleged in the complaint and are required to accept those facts as true. See, e.g., LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d Cir. 2009). A court may, however, consider documents attached to the complaint, statements or documents incorporated into the complaint by reference, matters of which judicial notice may be taken (including, of relevance here, official records of the United States Patent and Trademark Office), public records, and documents that the plaintiff either possessed or knew about, and relied upon, in bringing the suit. See, e.g., Kleinman v. Elan Corp., plc, 706 F.3d 145, 152 (2d Cir. 2013); Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002) (applying rule to district courts); see also, e.g., Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005) (noting that courts have taken judicial notice of trademark registrations); Kaplan, Inc. v. Yun, 16 F.Supp. 3d 341, 345 (S.D.N.Y. 2014) ("[T]he Court may take judicial notice of official records of the United States Patent and Trademark Office."). In addition, because a pro se plaintiff's allegations must be construed liberally, it is appropriate for a court to consider factual allegations made in a pro se plaintiff's opposition memorandum, as long as the allegations are consistent with the complaint. See, e.g., Braxton v. Nichols, No. 08-CV-8568 (PGG), 2010 WL 1010001, at *1 (S.D.N.Y. Mar.18, 2010); cf. Gill v. Mooney, 824 F.2d 192, 195 (2d Cir. 1987) (considering a pro se plaintiff's affidavit in opposition to a motion to dismiss in addition to those in the complaint). Accordingly, the following facts are taken from the Complaint, exhibits attached thereto, Ahmed's opposition papers (to the extent they are consistent with the Complaint), and documents of which the Court may take judicial notice.
Ahmed claims to be the "common law and established owner" of an Urdu-language trademark that the parties refer to as the "JANG" trademark. (Compl. ¶ 9). Ahmed filed an application to register the mark with the U.S. Patent and Trade Office (Id. ¶ 9), but his application was rejected (Decl. Mansoor Rehman Supp. GEO USA LLC's Mot. To Dismiss Pl.'s Compl. & Supp. GEO USA LLC's Opp'n Pl.'s Mot. Preliminary Inj. (Docket No. 12) ("Rehman Decl."), Ex. 15). Nevertheless, according to the Complaint, he has been using the mark since June 23, 2004, "in connection with the news publication; broadcasting; telecommunication; news; entertainment; life shows; comedy in Classes 38 and 41 of the International Classification of Goods and Services for the Purposes of the Registration of Marks." (Compl. ¶ 9). He alleges that GEO has been using a mark confusingly similar to the JANG mark "as the display logo on the website and also in print on its newspaper" in the United States without his permission. (Id. ¶ 11). Ahmed informed GEO that it was infringing his trademark, but GEO "deliberately disregarded the notice/notifications." (Id. ¶ 14). Thereafter, Ahmed filed this action, alleging three Lanham Act Claims - trademark infringement, unfair competition, and false description - as well as common law injury to his business reputation, and seeking a preliminary injunction. (Docket Nos. 1-2).
In evaluating a Rule 12(b)(6) motion, the Court must accept all facts set forth in the complaint as true and draw all reasonable inferences in the plaintiff's favor. See, e.g., Burch v. Pioneer Credit Recovery, Inc., 551 F.3d 122, 124 (2d Cir. 2008). A claim will survive a Rule 12(b)(6) motion, however, only if the plaintiff alleges facts sufficient "to state a claim to relief that is plausible on its face." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 556). A plaintiff must show "more than a sheer possibility that a defendant acted unlawfully, " id., and cannot rely on mere "labels or conclusions" to support a claim. Twombly, 550 U.S. at 555. If the plaintiff's pleadings "have not nudged [his or her] claims across the line from conceivable to plausible, [the] complaint must be dismissed." Id. at 570. Where, as here, the plaintiff is proceeding pro se, the complaint "must be held to less stringent standards than formal pleadings drafted by lawyers." Erickson v. Pardus, 551 U.S. 89, 94 (2007) (quoting Estelle v. Gamble, 429 U.S. 97, 106 (1976)). Nevertheless, a pro se litigant must still state a plausible claim for relief. See, e.g., Walker v. Schult, 717 F.3d 119, 124 (2d Cir. 2013). That is, the Court's "duty to liberally construe a plaintiff's complaint [is not] the equivalent of a duty to re-write it.'" Geldzahler v. N.Y. Med. Coll., 663 F.Supp.2d 379, 387 (S.D.N.Y. 2009) (quoting 2 Moore's Federal Practice § 12.34 [b], at 12-61 (internal quotation marks omitted)).
A. Plaintiff's Claims
The Court begins with Plaintiff's claim of trademark infringement under the Lanham Act. Whether an infringement claim is brought pursuant to Section 1114(1) or Section 1125(a) of the Lanham Act, a court "looks first to whether the plaintiff's mark is entitled to protection, and second to whether defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods." Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003). Plaintiff's infringement claim fails under both prongs. To prevail under the first prong of the test, a plaintiff must show both "prior use and ownership." Id.; see also De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 440 F.Supp.2d 249, 268-69 (S.D.N.Y. 2006) (same). Plaintiff alleges that he is the "common law and established owner of the Mark" and that, since June 23, 2004, he has used the mark "in connection with the news publication; broadcasting; telecommunication; news; entertainment; live shows; comedy in classes 38 and 41 of the International Classification of Goods and Services for the Purpose of Registration of Marks." (Compl. ¶ 9; see also Mem. Law Opp'n Defs. Mem. Opp'n Pl.'s Mot. Preliminary Inj. Opp'n Def.'s Mot. To Dismiss Under Rule 12(b)(1) & 12(b)(6) (Docket No. 16) ("Pl.'s Opp'n") 5). Notably, however, he does not provide any facts about his actual use of the mark. Indeed, it is impossible to tell from the Complaint the products or services with which the mark was supposedly used. The Supreme Court has made clear that such a "[t]hreadbare recital of the elements of a cause of action, supported by mere conclusory statements, " is insufficient to survive a motion to dismiss. Iqbal, 556 U.S. at 678; see also Rodman v. Stryker Sales Corp., No. 14-CV-1102 (JMF), 2014 WL 5002095, at *1 (S.D.N.Y. Oct. 7, 2014). That is all Plaintiff provides here.
Plaintiff's argument that Defendant's use of his mark creates a likelihood of confusion fails for the same reasons. In the Second Circuit, courts generally consider the nonexclusive list of factors outlined by Judge Friendly in Polaroid Corp. v. Polaroid Elec. Corp., 287 F.2d 392 (2d Cir. 1961), in deciding whether a likelihood of confusion exists. Those factors are: "(1) the strength of the plaintiff's mark[;] (2) the degree of similarity between the two marks; (3) the competitive proximity of the products or services; (4) the existence of actual confusion; (5) the likelihood that the plaintiff will bridge the gap' between the two markets; (6) the defendant's good faith in adopting its mark; (7) the quality of the defendant's product; and (8) the sophistication of the purchasers." Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256-57 (2d Cir. 1987) (quoting Polaroid, 287 F.2d at 495); see also NYP Holdings v. N.Y. Post Pub'g Inc., No. 14-CV-8310 (VM), 2014 WL 6603989, at *6 (S.D.N.Y. Nov. 17, 2014). The likelihood of confusion inquiry, however, "is not a mechanical process where the party with the greatest number of factors weighing in its favor wins." Vox Amplificiation Ltd. v. Meussdorffor, No. 13-CV-4922 (ADS) (GRB), ___ F.Supp. 3d ___, 2014 WL 4829578, at *14 (E.D.N.Y. Sept. 29, 2014) (internal quotation marks omitted). Instead, "a court should focus on the ultimate question of whether consumers are likely to be confused." Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000).
Here, Plaintiff states in his Complaint only that Defendant's use of the mark is "confusingly similar" to Plaintiff's mark and that Defendant is using the mark "to divert customers and further to mislead and deceive the customers of the Plaintiff." (Compl. ¶¶ 10, 13). He also states that he has used the mark since June 23, 2004. (Id. ¶ 9). He largely repeats those details in his memoranda of law ( see Pl.'s Mem. Supp. Mot. Preliminary Inj. (Docket No. 2) ("Pl.'s Mem.") 5-9; Pl.'s Opp'n 12), but adds very little new information. For example, in discussing the strength of his mark, Plaintiff states that the word "JANG' has been in continuous and substantial use since June 23, 2004" and that the mark is "inherently distinctive." (Pl.'s Mem. 8). Similarly, to prove that the parties offer the same goods or services, Plaintiff states in conclusory fashion that "Plaintiff is involved in [the] broadcasting and media industry... whereas the Defendant is also infringing the same mark through broadcasting, news publication and entertainment." (Id. 7). Such broad statements - devoid of any factual detail - are plainly insufficient as a matter of law. See Iqbal, 556 U.S. at 678; see also Volvo North Am. Corp. v. Men's Int'l Prof. Tennis Council, 687 F.Supp. 800, 813 (S.D.N.Y. 1988) (stating that "conclusory allegations that confusion is likely to occur and three specific occasions of actual confusion... are insufficient to make out a claim... under the Lanham Act"); cf. LBF Travel, Inc. v. Fareportal, Inc., No. 13-CV-9143 (LAK) (GWG), 2014 WL 5671853, at *8 (S.D.N.Y. Nov. 5, 2014) (Report and Recommendation) (noting that while "likelihood of confusion is a fact-intensive analysis that ordinarily does not lend itself to a motion to dismiss, " a motion to dismiss may be granted for failure to plead likelihood of confusion "if no reasonable factfinder could find a likelihood of confusion on any set of facts that plaintiff could prove" (internal quotation marks omitted)).
Ahmed's failure to adequately allege either how he uses the JANG mark or a likelihood of confusion is also fatal to his unfair competition and false description claims under the Lanham Act. To show unfair competition under the Lanham Act, Plaintiff must prove "(1) the existence of a valid mark, and (2) that the defendant's actions are likely to confuse the buying public." Tiffany (NH) Inc. v. eBay, Inc., 576 F.Supp.2d 463, 519 (S.D.N.Y. 2008) (internal quotation marks omitted); see Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009) ("To prevail on a trademark infringement and unfair competition claim... in addition to demonstrating that the plaintiff's mark is protected, the plaintiff must prove that the defendant's use of the allegedly infringing mark would likely cause confusion as to the origin or sponsorship of the defendant's goods with plaintiff's goods."). The standard for a false description claim is similar: The plaintiff must prove that "first... its mark merits protection, and second, that the defendant's use of a similar mark is likely to cause consumer confusion." Lyons P'ship, L.P. v. D&L Amusement & Entm't, Inc., 702 F.Supp.2d 104, 113 (E.D.N.Y. 2010) (internal quotation marks omitted). It is unclear whether Plaintiff is attempting to assert a false advertising claim, but that claim too requires a showing of likelihood of confusion. That is, because Plaintiff has not alleged a statement that is literally false, he would have to show that "while the advertisement is literally true, it is nevertheless likely to mislead or confuse consumers.'" Tiffany (NJ) Inc., 576 F.Supp.2d at 519 (quoting Johnson & Johnson * Merck Consumer Pharm. Co. v. Smithline Beecham Corp., 960 F.2d 294, 297 (2d Cir. 1992)). It follows that all of those Lanham Act claims must also be dismissed.
That disposes of all Plaintiff's federal claims. In the absence of any remaining federal claim, the Court declines to exercise supplemental jurisdiction over Plaintiff's claim for injury to business reputation. (Compl. ¶¶ 31-32). Pursuant to Title 28, United States Code, Section 1367, a district court has discretion over whether to exercise jurisdiction over state-law claims "that are so related to claims in the action within such original jurisdiction that they form part of the same case or controversy under Article III of the United States Constitution." 28 U.S.C. § 1367(a). The Supreme Court and the Second Circuit have made clear, however, that, as a general rule, "when the federal claims are dismissed the state claims should be dismissed as well.'" In re Merrill Lynch Ltd. P'ships Litig., 154 F.3d 56, 61 (2d Cir. 1998) (quoting United Mine Workers v. Gibbs, 383 U.S. 715, 726 (1966)). Here, there is no basis to depart from that general rule. Given the relatively early state of the case, the traditional "values of judicial economy, convenience, fairness, and comity" that the Court must consider do not ...