Reveron v. Spreadshirt, Inc.

Background

Stephanie M. Reveron, proceeding without a lawyer, sought leave under Federal Rule of Civil Procedure 15 to file a proposed amended complaint. Her claims concerned trademark infringement, unfair competition, and unjust enrichment based on Defendants’ alleged sale and promotion of clothing bearing the JERSEY CITY mark. The proposed complaint added allegations about the mark and replaced Sears Holdings Management Corporation with Transform SR Brands, LLC.

Reveron alleged that she acquired ownership of the JERSEY CITY brand name in December 2023, that the mark had been used by her predecessors since at least 2001, and that it had been listed on the Supplemental Register since March 6, 2018. She alleged that Spreadshirt, PlanetArt, Transform, and Walmart-Stores sold clothing bearing the mark and that some customers believed those products were sponsored by her.

Analysis

The report and recommendation stated that there was no apparent bad faith or undue prejudice in the proposed amendment. The issue was whether amendment would be futile. An amendment is futile when the proposed claims could not survive a motion to dismiss.

The report concluded that the proposed complaint did not adequately allege secondary meaning. Because JERSEY CITY is geographically descriptive, Reveron needed to plausibly allege that consumers associated the mark with a single source. The proposed complaint described advertising, sales, promotion, and long-term use, but did not provide facts about advertising expenditures, consumer surveys, sales figures, unsolicited media coverage, other infringement, or whether the mark’s design elements had acquired secondary meaning before Defendants’ products entered the market.

The report did not determine that Defendants’ use was necessarily descriptive or protected by fair use. It explained that fair use is an affirmative defense and that, based on the allegations, the use of JERSEY CITY on clothing might not be resolvable at the pleading stage. However, the proposed complaint in its current form did not adequately plead the mark’s secondary meaning, and actual or likely consumer confusion would not by itself defeat a fair-use defense.

The report also concluded that the proposed complaint did not adequately plead unjust enrichment. It did not allege a relationship between Reveron and any Defendant that could have created reliance, inducement, or an equitable obligation. The report stated that this deficiency appeared unlikely to be curable, but recommended allowing Reveron to include the claim in another proposed complaint if she could truthfully allege such a relationship.

Recommendation and Procedure

Magistrate Judge Robyn F. Tarnofsky respectfully recommended that Judge Cronan deny Reveron’s application for leave to file the proposed amended complaint, without prejudice to renewing the motion with a new proposed amended complaint within ten days after Judge Cronan’s decision denying the motion. The recommendation identified additional facts Reveron could allege, if supported, concerning advertising, consumer surveys, sales, media coverage, other infringement, design elements, and any relationship or obligation involving Defendants.

The parties were given fourteen days from service of the report and recommendation to file objections. The opinion states that failing to object within that period would waive objections and preclude appellate review.