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 Trademark Infringement Claim, But Dismisses Cybersquatting Claim

In an April 30, 2014 ruling, Judge John G. Koetl granted the defendants’ motion to dismiss the plaintiffs’ cybersquatting claim, but denied the motion to dismiss the other Lanham Act-related claims that the defendants’ “Manhattan Elite Prep” mark for test preparation services infringed the plaintiff’s “Manhattan Prep” and “Manhattan Prep” marks. In declining to dismiss the trademark infringement claims, Judge Koetl ruled that the plaintiffs had adequately alleged use of the marks at issue before the defendants’ use, and rejected the defendants’ contention that the plaintiffs’ filing of an intent-to-use application with the Trademark Office estopped the plaintiffs from showing that there had been actual use before the filing of the application. The Court, however, dismissed the cybersquatting claim, writing that:
the allegations in the Complaint regarding the defendants’ use of the domain name simply show another aspect of the alleged trademark infringement, rather than an attempt to profit specifically from “squatting” on the domain name with bad faith. These allegations do not suggest that defendants “perpetrated the core activities that threaten to result in the paradigmatic harm that the ACPA was enacted to eradicate,” that is, “the proliferation of cybersquatting – the Internet version of a land grab.”
The general information and thoughts posted to this blog are provided only as an informational service to the web community and do not constitute solicitation or provision of legal advice. Nothing on this blog is intended to create an attorney-client relationship and nothing posted constitutes legal advice. You should understand that the posts by the author, who is an attorney at U.S. law firm Allegaert, Berger & Vogel, may or may not reflect the views of that firm and that the author of this blog is only authorized to practice law in the jurisdictions in which he is properly licensed to do so. For additional information, click here.