Bayside Cmty. Ambulance Corps. v. Glen Oaks Volunteer Ambulance Corps.

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BAYSIDE COMMUNITY AMBULANCE CORPS., INC., a/k/a, BAYSIDE VOLUNTEER AMBULANCE CORPS., Plaintiff, v. GLEN OAKS VOLUNTEER AMBULANCE CORPS., INC., and Does 1 through 10, Defendants.

No. 24-cv-2114 (BMC)

United States District Court, E.D. New York

October 9, 2024

MEMORANDUM DECISION AND ORDER

COGAN DISTRICT JUDGE.

This is a trademark infringement case by Bayside Volunteer Ambulance Corps. (“BVAC”), a nonprofit organization that previously provided ambulance services in Bayside, Queens against Glen Oaks Volunteer Ambulance Corps. (“GOVAC”), a nonprofit organization that currently provides ambulance services in Bayside, Queens. For the reasons set forth below, GOVAC's motion to dismiss is granted in part and denied in part.

SUMMARY OF AMENDED COMPLAINT

BVAC was founded to provide ambulance services to residents of Bayside, Queens. Since its founding almost seventy years ago BVAC has used the phrase “Bayside Volunteer Ambulance Corps.” (the “BVAC Mark” or the “Mark”) in connection with its work. BVAC no longer provides ambulance services in Bayside but continues to provide medical training classes. BVAC may resume providing ambulance services in the future.

GOVAC was founded to provide similar services to various neighborhoods in Queens, and continues to provide these services. GOVAC began using the name “Bayside Glen Oaks Volunteer Ambulance Corp.” in 2023. GOVAC also created a website for its organization at the address www.baysidevac.com.

BVAC alleges in its amended complaint that it “has taken extensive steps and has been successful in educating the public to associate the [BVAC] Mark with a single source, to wit, plaintiff [BVAC].” BVAC explains that it has advertised its medical training classes in newspapers for decades with the BVAC Mark, BVAC's principal place of business is located in a prominent location in Bayside and displays the BVAC Mark on the exterior of the building, BVAC has engaged in community mass mailings twice a year for decades with the BVAC Mark, and BVAC engages in social media advertising with the BVAC Mark. BVAC's annual advertising expenses have historically been approximately $1,700; BVAC is currently spending approximately $15,000 annually on advertising.

BVAC also alleges that the following historical facts demonstrate that the public associates the BVAC Mark with BVAC: the New York State government has granted BVAC funding and has listed BVAC in various Senate budget bills and laws; the New York City Council has recognized members of BVAC for community service and issued three Proclamations (in 1993, 2002, and 2005) recognizing BVAC's service to the community; when BVAC was still providing ambulance services, it responded to several thousand emergency calls a year and participated in fifteen to twenty community events each year at which BVAC displayed the BVAC Mark; and in a recent decade, BVAC generated over $2.3 million in revenue. Additionally, BVAC asserts that it has received unsolicited media coverage for its services to the community, including more than fifty newspaper articles in Newsday, Daily News, Queens Chronical, and Bayside Times. Furthermore, the Bayside Times and Queens Courier have provided BVAC advertising space for free. BVAC claims that it has exclusively used the BVAC Mark for almost seventy years, except for GOVAC's use of the Mark commencing in 2023.

BVAC notes that, in a July 5, 2022 Office Action, the United States Patent and Trademark Office (“USPTO”) wrote that BVAC had “responded to the Primarily Geographic Descriptive and alternative Primarily Merely Descriptive refusals, as well as the 2(f) advisory by claiming 2(f) acquired distinctiveness. This response has been made of record.” The USPTO removed the “descriptive” issue from its July 5, 2022 Office Action. BVAC asserts that this amounted to the USPTO “agreeing, determining, and concluding that the [BVAC] Mark had acquired distinctiveness.”

BVAC alleges that, based on GOVAC's use of the name “Bayside Glen Oaks Volunteer Ambulance Corp.” and its use of a website with a similar name to BVAC's, GOVAC's conduct (1) constitutes trademark infringement and mark dilution in violation of the Lanham Act, (2) violates the Anti-Cybersquatting Consumer Protection Act (the “ACPA”), (3) violates New York General Business Law § 349, (4) amounts to false advertising and fraud, (5) violates New York Civil Rights Law §§ 50 and 51, (6) violates other New York State laws, and (7) constitutes unfair competition.

In response to BVAC's amended complaint, GOVAC filed a motion to dismiss, arguing that the BVAC Mark is a primarily geographically descriptive term, and as such is not entitled to trademark protection absent demonstration that it has acquired a secondary meaning, which BVAC has not sufficiently alleged.

LEGAL STANDARD

A court will grant a motion to dismiss when the complaint “fail[s] to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). To survive a motion to dismiss, a complaint must “state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quotation omitted).

“A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. (citation omitted). In reviewing a motion to dismiss, “a court must accept as true all [factual] allegations contained in a complaint” but “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. (citation omitted). In deciding a motion to dismiss, the court may only consider documents that are referenced in the complaint, documents that the plaintiff relied on in bringing suit, or matters of which judicial notice may be taken, including official records of the USPTO. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002); Telebrands Corp. v. Del Labs., Inc., 719 F.Supp.2d 283, 287 n.3 (S.D.N.Y. 2010).

DISCUSSION

I. Trademark Infringement and Mark Dilution Claims

To survive a motion to dismiss on a claim for trademark infringement or mark dilution under the Lanham Act, a plaintiff must plead facts tending to show that it has a valid mark entitled to protection and that the defendant's use of the mark “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [the user] with another person. . . .” 15 U.S.C. §§ 1125(a)(1)(A) and (C); see Time, Inc. v. Petersen Pub. Co., 173 F.3d 113, 117 (2d Cir. 1999) (quoting Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 390 (2d Cir. 1995)). “A mark is entitled to protection when it is inherently distinctive; if the mark is ‘merely descriptive,' . . . it qualifies for protection only if it has acquired secondary meaning.” Id. (quoting 15 U.S.C. § 1052(e)).

A mark is “inherently distinctive,” and thus entitled to protection, if it is suggestive, arbitrary, or fanciful. United States Pat. & Trademark Off, v. Booking.com B.V., 591 U.S. 549, 553 (2020) (quotation omitted). Marks consisting of geographic terms are considered descriptive and must acquire a secondary meaning to become distinctive and be entitled to protection. See Forschner Grp., Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 353-54 (2d Cir. 1994) (citing Bank of Texas v. Commerce Southwest, Inc., 741 F.2d 785 (5th Cir. 1984) (BANK OF TEXAS descriptive); In re Canada Dry Ginger Ale, Inc., 86 F.2d 830 (C.C.P.A. 1936) (map of Canada geographically descriptive); Warwood v. Hubbard, 218 Mont. 438, 709 P.2d 637 (1985) (YELLOWSTONE OUTFITTERS descriptive)).

BVAC fails to plead facts sufficient to show that the BVAC Mark is suggestive, arbitrary, or fanciful. BVAC does not plead any facts tending to show that “Bayside” is not descriptive of the geographic location of its business (ambulance corps. or otherwise). “[A] phrase or term that is descriptive of the geographic origin of a product will not receive trademark protection absent proof of secondary meaning.” Forschner, 30 F.3d at 353 (citations omitted).

BVAC's argument that the BVAC Mark is suggestive rather than descriptive because BVAC is no longer, in fact, a voluntary ambulance corps., is unpersuasive. BVAC's use of the BVAC Mark for its organization devoid of a volunteer ambulance corps. is more akin to a situation in which a mark owner assigns the mark to another person or business “in connection with a different goodwill and different product,” which “would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing.” Marshak v. Green, 746 F.2d 927, 929 (2d Cir. 1984). A mark cannot receive protection if the owner of the mark uses it in such a way that separates the mark from its goodwill. See id. (citation omitted). BVAC cannot have it both ways: either the Mark is suggestive because BVAC is not a volunteer ambulance corps., and therefore the Mark carries no protection; or the Mark does describe BVAC's services, and is thus descriptive.

Furthermore, the fact that the USPTO wrote that BVAC's response to the USPTO's rejection of the BVAC Mark as descriptive was “made of record,” on an issue not marked as final, does not tend to show distinctiveness. “In this Circuit, decisions of the USPTO are given a degree of deference” but an “initial determination carries no weight on [a] motion to dismiss.” Lebewohl v. Heart Attack Grill LLC, 890 F.Supp.2d 278, 292 (S.D.N.Y. 2012) (citations omitted); accord, Kaplan, Inc. v. Yun, 16 F.Supp.3d 341, 347 (S.D.N.Y. 2014).

Having rejected BVAC's argument that the BVAC Mark is suggestive, arbitrary, or fanciful, the question remains whether the BVAC Mark has acquired a secondary meaning. “Whether secondary meaning has...