World Trade Centers Association, Inc. v. The Port Authority of New York and New Jersey
Filing
94
MEMORANDUM OPINION AND ORDER: re: 15 MOTION to Dismiss Count I of the Complaint filed by The Port Authority of New York and New Jersey. For the foregoing reasons, Defendants motion to dismiss WTCA's trademark infringement claim is denied. This Memorandum and Order resolves docket entry number 15. The final pretrial conference is rescheduled to July 21, 2017, at 11:00 a.m., and the related deadlines are modified accordingly. (See docket entry no. 43, 4-9.). SO ORDERED. (Signed by Judge Laura Taylor Swain on 12/15/2016) (ama)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------x
WORLD TRADE CENTERS ASSOCIATION,
INC.,
Plaintiff,
-v-
No. 15 CV 7411-LTS
THE PORT AUTHORITY OF NEW YORK
AND NEW JERSEY,
Defendant.
-------------------------------------------------------x
MEMORANDUM OPINION AND ORDER
Plaintiff, World Trade Centers Association (“WTCA”), brings this action against
the Port Authority of New York and New Jersey (the “Port Authority” or “Defendant”), asserting
claims for infringement of a federally registered trademark owned and used by WTCA in
violation of the “Lanham Act” 15 U.S.C. §§ 1114(1), 1125(a), violations of New York State
common law, and breach of contract. This Court has jurisdiction of this action pursuant to 28
U.S.C. §§ 1331, 1338 and 1367.
Defendant has filed a motion to dismiss Plaintiff’s trademark infringement claim,
arguing Plaintiff has failed to allege sufficiently that the infringing mark would likely cause
confusion. The Court has reviewed thoroughly all of the parties’ submissions and, for the
reasons set forth below, Defendant’s motion is denied.
BACKGROUND
The following facts relevant to the disposition of the instant motion are drawn
WTCA.MTD
VERSION DECEMBER 15, 2016
1
from the Complaint and are assumed to be true for the purposes of this motion to dismiss.
WTCA is a non-profit trade association and owner of the trademark “WORLD TRADE
CENTER,” which has been registered in its name with the U.S. Patent and Trademark Office
(“PTO”) since 1987. (See Compl. ¶ 1.) For approximately thirty years, WTCA has licensed the
Port Authority to use the WORLD TRADE CENTER mark on a royalty-free basis in connection
with the physical building complex by the same name located in lower Manhattan. (Id. ¶ 2.) In
addition to its licensing agreement with the Port Authority, WTCA licenses WORLD TRADE
CENTER facilities in seven other U.S. cities. (Id. ¶ 16.) WTCA has more than 320 members
worldwide, including the Port Authority, which has repeatedly affirmed WTCA’s ownership of
the WORLD TRADE CENTER mark in writing. (Id. ¶¶ 1-2.) Based on decades of use by
WTCA and its licensees, both consumers and the trade industry identify the WORLD TRADE
CENTER mark with WTCA, its associations services, and the licensed WORLD TRADE
CENTER facilities. (Id.)
Recently, without authorization from WTCA, the Port Authority allegedly began
using a new trademark and logo (“ONE WORLD TRADE CENTER”) that directly incorporates
the WORLD TRADE CENTER mark for advertising of its One World Observatory and on
merchandise sold at the observatory. (Id. ¶ 4.) Publicly available PTO records indicate WTCA
had made filings stating its intention to use the WORLD TRADE CENTER mark in connection
with the sale of its own merchandise since as early as 2011. (See Ewing Dec., Ex. 2, at 2-15.)1
1
WTCA.MTD
See Munno v. Town of Orangetown, 391 F. Supp. 2d 263, 268 (S.D.N.Y. 2005)
(“The court may also consider matters of which judicial notice may be taken, even if
the corresponding documents are not attached to or incorporated by reference in the
complaint. In particular, the court may take judicial notice of public records.”)
(internal quotation marks and citations omitted).
VERSION DECEMBER 15, 2016
2
The Port Authority has knowingly and intentionally used the WORLD TRADE CENTER mark
despite WTCA’s objection and has advised that “WTCA has no ability to object” to the Port
Authority’s use of the mark worldwide in connection with goods or the right to oversee the
quality of goods sold under the mark. (See Compl. ¶ 4.) WTCA asserts that the Port Authority
cannot use the WORLD TRADE CENTER trademark in this manner absent WTCA’s consent.
(Id.)
DISCUSSION
On a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), the
Court “must accept as true all of the factual allegations set out in the Plaintiff’s complaint, draw
inferences from those allegations in the light most favorable to the Plaintiff, and construe the
complaint liberally.” Roth v. Jennings, 489 F.3d 499, 510 (2d Cir. 2007) (internal quotation
marks and citation omitted). To survive dismissal, “a complaint must contain sufficient factual
matter, accepted as true, to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 546 (2007).
To prevail on a claim of trademark infringement under the Lanham Act, a
Plaintiff must show (1) ownership of a valid trademark, (2) that defendant copied, reproduced, or
imitated the plaintiff’s trademark without permission as part of the sale or distribution of goods
or services and (3) that such use of the allegedly infringing mark would likely cause confusion as
to affiliation, connection or association between the two marks. Starbucks Corp. v. Wolfe’s
Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009). Defendant has moved to dismiss
WTCA’s trademark infringement claim on the ground that the Complaint fails to sufficiently
allege a likelihood of confusion.
WTCA.MTD
VERSION DECEMBER 15, 2016
3
In the Second Circuit, the likelihood of confusion between two marks is assessed
in light of the eight factors set forth in the so-called Polaroid test. See Polaroid Corp. v. Polarad
Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). These factors include: (1) the strength of
plaintiff’s mark, (2) the degree of similarity between the two marks, (3) the competitive
proximity of the parties’ products or services, (4) the existence of actual confusion, (5) the
likelihood that 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. Id. However, “these factors are not always dispositive and other factors may be
added or initial factors abandoned.” Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743
(2d Cir. 1998) (internal quotation marks and citations omitted).
The Port Authority argues that WTCA has failed to allege specific facts showing
a likelihood of confusion and that any confusion is merely “speculative.” (See Def. Mem. at 67.) The Port Authority further contends that WTCA has failed to allege facts specifically
corresponding to each of the eight Polaroid factors. (See id. at 13-16.)
As a general rule, “the likelihood of confusion is a fact-intensive analysis that
ordinarily does not lend itself to a motion to dismiss.” Merck & Co., Inc. v. Mediplan Health
Consulting, Inc., 425 F. Supp. 2d. 402, 412 (S.D.N.Y. 2006). It is well settled that, when
applying the Polaroid factors to determine likelihood of confusion at a motion to dismiss stage,
courts have not required all factors to be addressed in order to find adequate pleading of a
likelihood of confusion. See, e.g., Ritani, LLC v. Aghjayan, 880 F. Supp. 2d 425, 446 (S.D.N.Y.
2012) (holding that likelihood of confusion was adequately pleaded based on defendant’s
intentional use of and association with plaintiff’s “Ritani” mark in marketing materials); The
Name LLC v. Arias, No. 10 CV 3212, 2010 WL 4642456, at *5 (S.D.N.Y. Nov. 16, 2010)
WTCA.MTD
VERSION DECEMBER 15, 2016
4
(holding that likelihood of confusion was adequately pleaded based defendant use of the “40/40”
mark belonging to plaintiff on defendant’s website, without evidence of actual confusion or
competitive proximity between plaintiff’s “sports bar” in America and defendants’ “nightclub”
in the Dominican Republic). Rather, courts have consistently held that likelihood of consumer
confusion was adequately pleaded based on facts relating to some, but fewer than all, of the
Polaroid factors. See id.
The Court finds that WTCA has sufficiently alleged facts supporting an inference
of a likelihood of consumer confusion sufficient for the motion to dismiss stage pursuant to the
Polaroid factors. The Complaint alleges that the WORLD TRADE CENTER mark belongs to
WTCA and has been registered in its name with the PTO since 1987. (See Compl. ¶ 1.) Given
WTCA’s stature as an international non-profit trade association with 320 members worldwide,
its licensing agreement for facilities in seven other major U.S. cities and the worldwide name
recognition of the WORLD TRADE CENTER mark both before and after the tragic events of
September 11, 2001, WTCA has plausibly alleged that the WORLD TRADE CENTER mark is
strong and well recognized. (See id. ¶¶ 1-2, 16.) The Port Authority’s use of the WORLD
TRADE CENTER mark in its ONE WORLD TRADE CENTER logo clearly incorporates
WTCA’s mark, supporting a reasonable inference of a high degree of similarity between the two
marks. (See Compl. Ex. 7-8.)
While WTCA and the Port Authority are not currently competitors, publicly
available PTO records dating back to 2011 indicate that WTCA intends to use the WORLD
TRADE CENTER mark in connection with the sale of merchandise bearing the mark, thus
plausibly demonstrating that WTCA intends to “bridge the gap” over its current lack of
competitive proximity with the Port Authority in the merchandising area. (See Ewing Dec., Ex.
WTCA.MTD
VERSION DECEMBER 15, 2016
5
2, at 2-15.) Indeed, the Port Authority’s use of the trademark, which its subsidiaries licensed
from WTCA (see Compl. ¶¶ 21-23), for merchandising tied to a building named pursuant to the
license suggests that there is not much of a gap to bridge. The Complaint also demonstrates that
the Port Authority has knowingly and intentionally used the WORLD TRADE CENTER mark,
despite WTCA’s objection, after having repeatedly affirmed WTCA’s ownership of the mark in
writing throughout a thirty-year licensing relationship, thus giving rise to the reasonable
inference that the Port Authority has acted in bad faith. (See Compl. ¶¶ 2-4.) Finally, given that
the Port Authority intends to sell inexpensive promotional merchandise, likely as souvenirs for
tourists and visitors to the newly constructed One World Observatory, the clear presence of the
WORLD TRADE CENTER mark on these items, absent any association with the Port Authority,
gives rise to the reasonable inference of an association with WTCA, which has been the legal
owner of the mark since 1987. (See Compl. Ex. 7-8.) Taken as a whole, WTCA’s pleading
plausibly demonstrates a likelihood of consumer confusion.
The Port Authority also contends that its use of the WORLD TRADE CENTER
mark is simply a geographic designation indicating the building of that name located at that
address and cannot cause confusion because it is a “fair use” as a matter of law. (See Def. Mem.
at 10.) This argument is unavailing on multiple grounds. First, as an affirmative defense, fair
use is a fact intensive inquiry that requires weighing of evidence outside the complaint and
cannot generally be resolved on a motion to dismiss. See Kelly-Brown v. Winfrey, 717 F.3d
295, 308 (2d Cir. 2012) (“Because fair use is an affirmative defense, it often requires
consideration of facts outside the complaint and is thus inappropriate to resolve on a motion to
dismiss.”) Second, to assert a successful fair use defense to a trademark infringement claim, the
defendant must prove that the use was made (1) other than as a mark, (2) in a descriptive sense
WTCA.MTD
VERSION DECEMBER 15, 2016
6
and (3) in good faith. Id. (internal citation omitted). Given the usage of the WORLD TRADE
CENTER mark on advertising and merchandise as well as the Port Authority’s alleged
knowledge of and disregard for WTCA’s ownership of the mark, the Port Authority’s argument
for fair use is unavailing at this stage of the litigation. The Court therefore denies the Port
Authority’s motion to dismiss WTCA’s trademark infringement claim under the Lanham Act.
CONCLUSION
For the foregoing reasons, Defendant’s motion to dismiss WTCA’s trademark
infringement claim is denied. This Memorandum and Order resolves docket entry number 15.
The final pretrial conference is rescheduled to July 21, 2017, at 11:00 a.m., and the related
deadlines are modified accordingly. (See docket entry no. 43, ¶¶ 4-9.).
SO ORDERED.
Dated: New York, New York
December 15, 2016
/s/ Laura Taylor Swain
LAURA TAYLOR SWAIN
United States District Judge
WTCA.MTD
VERSION DECEMBER 15, 2016
7
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?