Sander v. Verizon Corporate Headquarters New York

Filing 33

MEMORANDUM AND ORDER: For the reasons set forth above, Verizon's motion to dismiss PFW's amended complaint (Doc No. 26 ) is granted. SeeFed. R. Civ. P. 12(b)(6). The Clerk of Court is respectfully directed to enter judgment accordingly and close this case. Ordered by Judge Roslynn R. Mauskopf on 3/17/2017. (Taronji, Robert)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

--------------------------------------------------------------)(
PUBLIC FREE WILL CORP.,
Plaintiff,
- against -

MEMORANDUM AND ORDER
15-CV-6354 (RRM) (JO)

VERIZON COMMUNICATIONS INC. ,
Defendant.

---------------------------------------------------------------)(
ROSL YNN 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
November 5, 2015 , pursuant to 28 U .S.C. §§ 1131 , 1367(a), 1441. 1 (See generally id.) On
March 15, 2015, Public Free Will Corp. ("PFW") fi led an amended complaint as plaintiff,
asserting the fo llowing 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

1

In the state court action, Marie Sander, the founder of Public Free Will Corp. ("PFW"), commenced the action pro

se in her individual capacity. (See generally Notice of Removal. ) In order to assert a violation of PFW's rights,
Sander substituted PFW as the p la intiff in her amended complaint and obtained counsel to appear on behalf of the
corporate entity PFW. (See generally Am. Comp!.; 12/ 18/ 15 Min. Entry (Doc. No. I 0).) Counsel sought to
withdraw, and his in itial motion was denied. See Docket Entry dated 5/1 8/20 16. A second moti on to withdraw is
pending (Doc. No. 3 1) and is denied as moot.

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. Comp!. 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 fi led an

application for " Recognition of Exemption under 50l(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."' (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
2

VA; costs and attorneys' fees; and "compensatory, treble, and/or statutory damages." (See id. at

iii! 23, 38.)

PFW also seeks injunctive relief. (See id. at if 38.)

STAND ARD 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."' Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)); Hayden

v. Paterson, 594 F.3d 150, 16 1 (2d Cir. 20 10). 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 mi sconduct alleged." Matson v. Bd. of Educ., 631F.3d57, 63 (2d Cir. 20 11 ) (quoting

Iqbal, 556 U.S . at 678). T he Court assumes the truth of the facts alleged, and draws all
reasonable inferences in the nonmovant's favor. See Harris v. Mills, 572 F.3 d 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 l 2(b)( 6) if
it "consists of conclusory a llegations unsupported by factual assertions." Dow Jones & Co., Inc.

v. Int'! 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.

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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. FragranceXcom, 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. Petfect Gluco Prod., Inc.,
No. 14-CV-1678 (KAM) (RER), 2014 WL 4966102, at *19 (E.D.N.Y. Oct. 3, 20 14) ("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.
2 It is unclear exactly what terms fom1 the basis of PFW's claims, as the amended complaint refers interchangeably
to " Public Free Will Corp." and "Free-Will" when d iscussing PFW 's asserted trademark. (See Am. Compl.
15, 26, 29, 38, Ex. I, Ex. Ill.)

4

at~~

13,

§ 1114(a) and both registered and unregistered marks under 15 U.S.C. § 11 25(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. § l l 14(a) and§ l 125(a), the Court notes that the standards under
either statute are substantially similar for purposes of this motion. See Van Praagh v. Grallon,
993 F. Supp. 2d 293, 30 1 (E.D.N.Y. 20 14) ("Courts employ substantially similar standards when
analyzing claims for trademark infringement under the Lanham Act, 15 U.S .C. § 1114(1)(a);
fal se designation of origin under the Lanham Act, 15 U.S.C. § 11 25(a); trademark infringement
under New York common law; and unfair competition under New York common law. "); (See

generally Mot. Dismiss; Pl. 's Opp' n Mot. Dismiss (Doc. No. 25-1); Def.'s Reply Mot. Dismiss
(Doc. No. 27).)
In order to state a claim for trademark infringement under the Lanham Act, a plaintiff
must estab lish that ( I ) the plaintiff has a valid trademark that is entitled to protection under the
Lanham Act; (2) the defendant used the trademark in commerce without the plaintiff s consent;
and (3) there was likelihood of consumer confusion due to the defendant's use of the trademark.

See 1-800 Contacts, inc. v. WhenU. Com, Inc., 4 14 F.3d 400, 407 (2d Cir. 2005) (citation
omitted); Time, Inc. v. Petersen Pub. Co. L.L. C., 173 F.3d 113 , 117 (2d Cir. 1999); see also

Innovation Ventures, LLC v. Ultimate One Distrib. Corp., 176 F. Supp. 3d 137, 153 (E.D.N.Y.
2016). The Lanham Act protects marks related to both goods and services. See 15 U.S.C.
§ 11 27. Here, PFW does not allege that its mark relates to goods, but rather that its mark relates
to services rendered to "homeless veterans and disadvantaged individuals." (Am. Compl. at
~~

9, 25-26.) The Second Circuit has defined "services" protected under the Lanham Act as "the

performance of labor fo r the benefit of another. " Morningside G1p. Ltd v. Morningside Capital
5

Grp., L.L.C. , 182 F.3d 133, 137 (2d Cir. 1999). Although both parties use the term "trademark"
throughout their briefs, a mark used in connection with the rendering of services is referred to as
a " service mark." Mwphy v. Provident Mut. Life Ins. Co. , 923 F.2d 923, 926 (2d Cir. 1990).
The standards for protection of trade and service marks are identical. Id. at 927.
A. Protectable Trademark
As a threshold matter for trademark infringement claims, the plaintiff must first
demonstrate its own right to use the mark in question. Haggar Int 'l Corp. v. United Co. for Food

Indus. Corp. , 906 F. Supp. 2d 96, 105 (E.D.N.Y. 2012) (citing Buti v. Perosa, S.R.L. , 139 F.3d
98, 103 (2d Cir. 1998)). A pa11y establishes ownership rights to a mark when it is " the first-touse" the mark in commerce, "not the first-to-register" the mark. Id. The Lanham Act defines
"use in commerce" as "the bona fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark. " 15 U.S.C. § 1127. A service mark "shall be deemed to be
in use in commerce ... when it is used or displayed in the sale or advertising of services and the
services are rendered in commerce . ... " Id. "The ' talismanic test' is whether the mark was
used ' in a way sufficiently public to identify or distinguish the marked goods in an appropriate
segment of the public mind as those of the adopter of the mark."' See Int 'l Healthcare Exch. ,

Inc. v. Glob. Healthcare Exch. , LLC, 470 F. Supp. 2d 365, 371 (S.D.N.Y. 2007) (internal citation
omitted). Mere advertising of a service mark does not constitute " use" of the mark in commerce;
rights to the mark develop when services bearing the mark are offered in United States
commerce and are followed by continuous commercial utilization. See Buri, 139 F.3d at 103- 04
(finding the party' s mere promotional activities, absent proof of services offered in commerce,
did not establish the party's rights to the service mark); see also La Societe Anonyme des

Parfams le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1272 (2d Cir. 1974) ("89 sales in 20 years

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[does not] constitute[] the kind of bona fide use intended to afford a basis for trademark
protection.").
Here, PFW argues that it established ownership rights to the service marks "Public Free
Will" and " Free Will" when it used the marks in the foll owing instances: ( I) its application, in
the name of "Public Free Will Corp.," for a Certificate oflncorporation with DOS; (2) its
application, in the name of " Free-Will," for "Recognition of Exemption under Section 501 (c)(3)
of the Internal Revenue Code"; and (3) its application, in the name of " Free Will," for a grant
from the VA. (See Am. Comp!. at ~~ 13, 15- 16; Pl. 's Opp' n to Mot. Dismiss at 9- 10.) Other
than stating that " commerce" under the Lanham Act relates to all commerce regulated by
Congress, PFW provides no legal bases to establish that filing applications to state and federal
agencies constitutes "use in commerce" sufficient to provide ownership ri ghts to a service mark.
(See Pl. ' s Opp' n to Mot. Dismiss at 9- 10.)

Although PFW' s service mark may have been "exposed to the public" when DOS
published the name "Public Free Will" on its database, PFW' s amended complaint fails to allege
that PFW has used its service marks commercially in connection with the services it intended to
offer. Just as the mere advertisement of a service mark is insufficient to establish ownership
rights, PFW ' s mere public filings of its service marks are insufficient to establish ownership
rights based on the marks' " use in commerce." See Bu ti, 139 F.3 d at I 03-04; Int 'l Healthcare,
470 F. Supp. 2d at 37 1. At best, PFW' s allegations demonstrate that it filed the service marks
and planned to provide future services. Absent allegations suggesting that the service marks
have been used in connection with actual services to homeless veterans and disadvantaged
individuals, PFW fail s to allege facts that establish it has a protectable service mark under the
Lanham Act.

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B. Verizon's Alleged Use of PFW 's Service Mark
Assuming arguendo that PFW has a protectable service mark under the Lanham Act,
PFW must also establish that Verizon used PFW 's service mark in commerce without its
consent. See 1-800 Contacts, 414 F.3d at 407. To survive a motion to dismiss under Rule
I 2(b)( 6), a plaintiff alleging trademark infringement must provide "factual allegations
concerning the nature of the [defedant' s] use" in order to "give the defendant[] fair notice of the
claims against [it] ...." Dow Jones, 451 F.3d at 307.
Here, PFW' s amended complaint alleges that, sometime after PFW filed its applications
to government agencies, Verizon engaged in a "widespread multi-medium advertising
campaign" for a telecommunication service featuring the term 'Free Will."' (Id.

at~~

17, 19.)

PFW does not provide any facts, detai ls, or descriptions concerning erizon's alleged
advertisement, nor does it provide a copy of a Verizon advertisement that uses the term " Free
Will." Such a "conclusory allegations unsupported by factual assertions ... fai ls even the liberal
standard of Rule 12(b)(6)." Dow Jones, 451 F.3 d at 307 (citation and quotation marks omitted).
C. Likelihood of Confusion
Moreover, PFW has failed to allege a plausible claim of infringement as it has failed to
alleged facts sufficient to give rise to a likelihood of confusion pursuant to the well-known

Polaroid facto rs. Polaroid Corp. v. Polarad Elecs. COfp., 287 F.2d 492, 495 (2d Cir. 1961 ).3

3

If a plaintiff establishes ownership of a protectable service mark, the Court must then determine whether
defendant's alleged use of the mark causes a like Iihood of confusion as to the source of the services. See 1-800, 4 14
F.3d at 407; Time, Inc., 173 F.3d at 11 7; see also Innovation Ventures, 176 F. Supp. 3d at 153. In addressing
likelihood of confusion, courts apply the fo llowing eight Polaroid factors set forth by the Second C ircuit:
(i) the strength of p la intiffs mark; (i i) the simi larity of the parties' marks; (ii i) the proximity of the parties' products
in the marketplace; (iv) the likelihood that the plaintiff wi ll bridge the gap between the products; (v) actual
confusion; (vi) the defendant's intent in adopting its mark; (vii) the quality of the defendant 's product; and
(viii) the sophistication of the relevant consumer group. Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d
Ci r. 2000) (citing Polaroid Corp. v. Polarad £lees. Corp., 287 F.2d 492, 495 (2d Cir. 1961 ). None of these factors
are dispositive, and courts should focus on the ultimate question of whether consumers are likely to be confused,
instead of mechanica lly finding a winner by determining wh ich party has the most factors in its favor. See Nabisco,
220 F.3d at 46.

8

PFW argues that likelihood of confusion "involves questions of fact that should be determined in
view of discovery. "

While the inquiry is ultimately a fact-sensitive question as PFW argues

(Pl. ' s Opp' n to Mot. Dismiss at 11 ), a plaintiff is still required to allege facts regarding
likelihood of confusion that would state a claim to relief that is plausible on its face. See Iqbal,
556 U.S. at 677. Here, PFW merely asserts legal conclusions that track the text of 15 U.S.C. §
1125 and the Polaroid factors which are insufficient to give rise to a plausible claim. See

Carson Optical, Inc. v. Prym Consumer USA, Inc., 11 F. Supp. 3d 3 17, 345-46 (E.D.N.Y. 2014)
(granting a motion to dismiss for failure to state a claim where plaintiffs' allegations were legal
conclusions that merely tracked the text of 15U.S.C.§ l1 25(a) and the Polaroid factors). PFW' s
amended complaint states that "the most telling" Polaroid factors in this case are "the ' degree of
similarity of the two marks' and the ' sophistication of the buyers." (Am. Comp!.

at ~

28.)

However, aside from its allegation that Verizon engaged in "a multi-medium advertising blitz
with a very similar mark," PFW provides no facts in its amended complaint sufficient to suggest
that the marks, as a whole, are confusingly similar. (See Am. Comp!.

at ~

28); see also Universal

City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 117 (2d Cir. 1984) (comparing each mark in its
entirety to determine whether the marks as a whole are confusingly similar). Moreover, PFW
simply states that "the homeless and disadvantaged are not in a highly sophisticated cohort";
therefore, there is a high likelihood they would be confused as to the source of sheltering
services when confronted by Verizon ' s alleged advertising campaign. (See Am. Comp!.

at ~

28.)

PFW alleges no other facts to state a plausible claim of a likelihood of confusion, or facts to
support the other Polaroid factors. Accordingly, PFW fai ls to sufficiently plead facts that state a
claim for infringement under the Twombly /Iqbal pleading standard.

9

II.

Tortious Interference with Prospective Economic Advantage
PFW's amended complaint also includes a New York state law claim for tortious

interference with prospective economic advantage. (Am. Compl. at~~ 35- 36.) In order to state
a claim for tortious interference with prospective economic advantage, a p laintiff must establish
the following: "( l) [the plaintiff] had a business relationship with a third party; (2) the defendant
knew of that relationship and intentionally interfered with it; (3) the defendant acted solely out of
malice, or used dishonest, unfair, or improper means; and (4) the defendant' s interference caused
injury to the relationship." Carvel C01p. v. Noonan, 350 F.3d 6, 17 (2d Cir. 2003). To survive a
motion to dismiss, a plaintiff must allege facts sufficient to state a plausible claim for relief under
each element of the tortious interference claim. See Carson, 11 F. Supp. 3d at 337 (finding that
in order to withstand a motion to dismiss, plaintiffs must allege facts sufficient to establi sh each
element of the tortious interference claim); S&L Vitamins, Inc. v. Australian Gold, Inc., 521 F.
Supp. 2d 188, 2 17 (E.D.N. Y. 2007) (dismissing complaint because plaintiff fai led to allege any
facts to support the third element of tortious interference: that the defendant was motivated solely
by malice, "beyond mere self-interest or other economic considerations").
In the case at hand, PFW' s amended complaint alleges that "Verizon' s deliberate launch
and running of an ad campaign using Plaintiff's service mark, either in knowledge of Plaintiff's
rights in said mark, or in willful ignorance thereof, caused Plaintiff to be refused for
consideration as an applicant for a grant from the VA." (Am. Compl.

at~

36.) PFW argues that

its grant application with the VA and the subsequent denial of funds due to Verizon ' s
advertisement campaign establi sh the first and fourth elements of tortious interference: a
business relationship with a third party and Verizon' s interference, which caused injury to the
relationship. (Pl. 's Opp' n to Mot. Dismiss at 13.) Even assuming this to be true, which is not at
all a given under the law, PFW concedes in its opposition brief that it has pleaded, at best, only
10

these two out of the four elements of its tortious intetference claim. (See Pl. 's Opp'n to Mot.
Dismiss at 12-13.) PFW argues that it can plead the two remaining elements only after
discovery. (See id.) However, "Rule 8 . .. does not unlock the doors of discovery for a plaintiff
armed with nothing more than conclusions." Iqbal, 556 U.S. at 678-79. As the courts in Carson
and S&L indicate, PFW must allege facts sufficient to state a plausible claim for relief under
each element of the tortious interference claim. See Carson, 11 F. Supp. 3d at 337; S&L, 521 F.
Supp. 2d at 217. PFW provides no factual allegations that Verizon had knowledge of PFW's
alleged business relationship with the VA and provides no allegations that Verizon' s advertising
campaign was "motivated solely by malice or to inflict injury by unlawful means, beyond mere
self-interest or other economic considerations." See S&L, 52 1 F. Supp. 2d at 2 17; (see generally
Am. Comp!.) Accordingly, PFW has fai led to allege sufficient facts to state a plausible claim of
tortious interference with prospective economic advantage. 4

~ In the conclusion of its opposition brief, PFW makes passing reference to amending the complaint for a second

time. (See Pl. 's Opp' n to Mot. Dismiss at 14.) However, PFW asserts no basis for any such amendment and fails to
specify how another amendment could cure its pleading deficiencies. Courts may deny a plaintiff s request to
amend its complaint when the plaintiff " fai led to resolve its pleading deficiencies in its First Amended Complaint"
and "entirely failed to specify how it could cure its pleading deficiencies." TechnoMarine SA v. Giffports, Inc., 758
F.3d 493, 505-06. Accordingly, plaintiffs request to seek a further amendment is denied.

11

CONCLUSION
For the reasons set forth above, Verizon's motion to dismiss PFW' s amended complaint
(Doc No. 26) is granted. See Fed. R. Civ. P. 12(b)(6).
The Clerk of Court is respectfully directed to enter judgment accordingly and close this
case.

SO ORDERED.

Ros{ynn 'R. Jvt.auskoyf
ROSL YNN R. MAUSKOPF
United States District Judge
Dated: Brooklyn, New York
March I 7, 2017

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