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Public Free Will Corp. v. Verizon Communications Inc.

United States District Court, E.D. New York

March 17, 2017

PUBLIC FREE WILL CORP., Plaintiff,
v.
VERIZON COMMUNICATIONS INC., Defendant.

          MEMORANDUM AND ORDER

          ROSLYNN R. MAUSKOPF, UNITED STATES DISTRICT JUDGE.

         This action began in September 2015 in the Supreme Court of the State of New York, Kings County, under Index Number 11555/15, (see Notice of Removal (Doc. No. 1) at 1-2 (Electronic Case Filing System ("ECF") pagination)), and was removed to this Court on Novembers, 2015, pursuant to 28 U.S.C. §§ 1131, 1367(a), 1441.[1] (See generally id.) On March 15, 2015, Public Free Will Corp. ("PFW") filed an amended complaint as plaintiff, asserting the following causes of action against defendant Cellco Partnership d/b/a Verizon Wireless ("Verizon"): (1) trademark infringement under the Lanham Act, 15 U.S.C. § 1125; (2) trademark infringement under New York state law; and (3) tortious interference with prospective economic advantage under New York state law. (Am. Compl. (Doc. No. 13) at ¶¶ 34-36.) PFW seeks injunctive relief, attorney's fees, and compensatory, treble, and statutory damages. (Id. at ¶¶23, 38.)

         Before the Court is Verizon's motion to dismiss PFW's amended complaint pursuant to Federal Rule of Civil Procedure ("Rule") 12(b)(6) for failure to state a claim upon which relief can be granted. (See Mot. Dismiss (Doc. No. 26-1).) For the reasons that follow. Verizon's motion is granted in its entirety.

         BACKGROUND

         The following facts are taken from PFW's amended complaint and considered true for purposes of this motion to dismiss. PFW is a not-for-profit corporation that seeks to create "housing for homeless veterans and disadvantaged individuals." (Am. Compl. at ¶ 9.) On April 11, 2014, in preparation for launching PFW, PFW's founder, Marie Sander, filed an application for a Certificate of Incorporation with the New York State Department of State ("DOS") under the entity name "Public Free Will Corp." (Id. at ¶ 13, Ex. I.) Subsequently, Sander filed an application for "Recognition of Exemption under 501(c)(3) of the Internal Revenue Code" under the entity name "Free-Will." (Id. at ¶ 15, Ex. III.)

         Also in April 2014, Sander applied for a $2.6 million grant from the Veteran's Administration (the "VA") to finance her acquisition of a facility to house prospective clients. (Id. at ¶ 16.) The grant application stated that an entity named "Free Will" would operate the facility. (Id.) The VA, however, allegedly "refused to proceed with paperwork naming Public Free Will as the applicant on the basis that the name Public Free Will was being used by others, and thus was not available to Plaintiff." (Id. at ¶ 19.) PFW claims that the VA refused to process the grant application because, at some point after Sander registered "Public Free Will Corp." with the DOS, "Verizon commenced a widespread multi-medium advertising campaign for a telecommunication service featuring the term 'Free Will."1 (Id. at ¶¶ 17, 19.)

         In its amended complaint, PFW asserts that Verizon is liable for: (1) trademark infringement under the Lanham Act, 15 U.S.C. § 1125; (2) trademark infringement under New York State law; and (3) tortious interference with prospective economic advantage under New-York law. (Id. at ¶¶ 24-36.) PFW seeks damages in the amount of the grant sought from the VA; costs and attorneys' fees; and "compensatory, treble, and/or statutory damages." (See Id. at ¶¶ 23, 38.) PFW also seeks injunctive relief. (See Id. at ¶ 38.)

         STANDARD OF REVIEW

         Pursuant to Rule 12(b)(6), a party may move to dismiss a cause of action that "fail[s] to state a claim upon which relief can be granted." Fed.R.Civ.P. 12(b)(6). Rule 8(a)(2) of the Federal Rules of Civil Procedure provides that a pleading must contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). In order to withstand a motion to dismiss, a complaint "must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.1" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)); Hoyden v. Paterson, 594 F.3d 150, 161 (2d Cir. 2010). A claim is 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." Matson v. Bd. of Educ, 631 F.3d 57, 63 (2d Cir. 2011) (quoting Iqbal, 556 U.S. at 678). The Court assumes the truth of the facts alleged, and draws all reasonable inferences in the nonmovant's favor. See Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009). Although all factual allegations contained in the complaint are assumed to be true, this tenet is "inapplicable to legal conclusions." Iqbal 556 U.S. at 678.

         In the context of trademark infringement claims, a complaint fails under Rule 12(b)(6) if it "consists of conclusory allegations unsupported by factual assertions." Dow Jones & Co., Inc. v. Int'l Sec. Exch., Inc., 451 F.3d 295, 307 (2d Cir. 2006) (internal citation and quotation marks omitted). In particular, "the mere assertion" that a defendant's conduct "would constitute trademark infringement and dilution, without any factual allegations concerning the nature of the threatened use, does not give the defendant[] fair notice of the claims against [it] and does not show, by facts alleged, that [the plaintiff] is entitled to relief." Id.; see also Associated Press v. All Headline News Corp., 608 F.Supp.2d 454, 462 (S.D.N.Y. 2009) (dismissing trademark infringement claim for failure to state a claim because "[i]t is unclear from the Amended Complaint precisely what conduct by the defendants is alleged to have infringed the plaintiffs marks").

         DISCUSSION

         I. Trademark Infringement

         PFW claims that Verizon infringed on its trademark in violation of both the Lanham Act and New York state law.[2] The analysis of trademark infringement claims under New York law mirrors the analysis of trademark infringement claims under the federal Lanham Act. FragranceNet.com, Inc. v. FragranceX.com, Inc., 493 F.Supp.2d 545, 548 (E.D.N.Y. 2007) ("[T]he elements necessary to prevail on common law causes of action for trademark infringement.. . mirror Lanham Act claims.") (quoting Info. Superhighway, Inc. v. Talk Amer., Inc. 395 F.Supp.2d 44, 56 (S.D.N.Y. 2005)); Gluco Perfect, LLC v. Perfect Gluco Prod.. Inc., No. 14-CV-1678 (K.AM) (RER), 2014 WL 4966102, at *19 (E.D.N.Y. Oct. 3, 2014) ("The standards for trademark and trade name infringement under New York law are identical to those under the Lanham Act.") (citing ESPN, Inc. v. Quicksilver, Inc., 586 F.Supp.2d 219, 230 (S.D.N.Y. 2008) (collecting cases). As such, the Court analyzes PFW's federal and state law trademark infringement claims as one.

         The Lanham Act prohibits the "use in commerce" of "any word, term, name, symbol, or device, or any combination thereof, " that "is likely to cause confusion" or "misrepresents the nature" of a plaintiff s or "another person's goods [or] services ... in commercial advertising or promotion . .. ." 15 U.S.C. § 1125. The Lanham Act protects registered marks under 15 U.S.C. § 1114(a) and both registered and unregistered marks under 15 U.S.C. § 1125(a). Here, PFW does not allege that it registered its mark with the U.S. Patent and Trademark Office; thus, PFW alleges trademark infringement pursuant to 15 U.S.C. § 1125(a). (See Am. Compl. at 8.) Although the parties cite to cases in their briefs that analyze trademark infringement claims pursuant to both 15 U.S.C. § 1114(a) and § 1125(a), the Court notes that the standards under either statute are substantially similar for purposes of this motion. See Van Praagh v. Gralton, 993 F.Supp.2d 293, 301 (E.D.N, Y. 2014) ("Courts employ substantially similar standards when analyzing claims for trademark infringement under the Lanham Act, 15 U.S.C. ยง 1114(1)(a); false designation of origin under the Lanham ...


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