United States District Court, E.D. New York
MEMORANDUM AND ORDER
ROSLYNN R. MAUSKOPF, UNITED STATES DISTRICT JUDGE.
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. (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.)
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.
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.)
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.)
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.)
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.
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").
claims that Verizon infringed on its trademark in violation
of both the Lanham Act and New York state law. 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.
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. §
1114(1)(a); false designation of origin under the Lanham ...