A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Declines to Dismiss Lanham Act Claims for Mark on Supplemental Register

In a November 19, 2013 ruling, Judge Louis L. Stanton largely denied defendant American Tibetan Health Institute, Inc.'s motion to dismiss plaintiff C&L International Trading Inc.'s action asserting Lanham Act and related claims.  C&L had a design mark registered on the Trademark Office's supplemental register that incorporated the word mark "Tibetan Baicao Tea," and a registration for the word mark alone with New York State's Department of State.  American Tibetan claimed that it had its own registration for the identical word mark on the Trademark Office's principal register.  American Tibetan filed a trademark infringement action against C&L, and C&L started this separate trademark infringement action against American Tibetan, which did not mention American Tibetan's trademark registration.

American Tibetan moved to dismiss C&L's complaint, arguing that its superior rights arising from its registration on the principal register should prevail.  The Court noted that although American Tibetan's superior rights could provide a defense, C&L's complaint does not mention American Tibetan's registration and so cannot be considered on a motion to dismiss.  Judge Stanton also ruled that C&L's complaint adequately alleged that American Tibetan had abandoned any rights it might ever have had in the marks.

 American Tibetan further argued that C&L's registration on the supplemental registration was not entitled to protection.  Judge Stanton wrote that marks on the supplemental register are entitled to protection under the Lanham Act if "mares are entitled to protection under common law -- that is, if . . . the marks are sufficiently distinctive to distinguish the goods from the goods of others."  The Court found that C&L's complaint adequately alleged the distinctiveness of C&L's marks, and rejected American Tibetan's argument.

Judge Stanton did, however, dismiss C&L's counterfeiting claim under the Lanham Act.  The Court ruled that a counterfeiting claim under 15 U.S.C. § 1127 can only be maintained for marks on the principal register.
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