Reveron v. Spreadshirt, Inc.

Background

Stephanie M. Reveron brought claims for trademark infringement, unfair competition, and unjust enrichment. Walmart-Stores, Inc. moved to dismiss the complaint. Rather than oppose that motion, Reveron sought permission to file an amended complaint.

The court previously denied her initial request to amend, without prejudice to filing a renewed motion. Reveron later submitted two filings with proposed amended complaints, which Magistrate Judge Robyn F. Tarnofsky treated as a renewed motion for leave to amend. Judge Tarnofsky reviewed the later proposed amended complaint.

Report and Recommendation

Judge Tarnofsky recommended denying the renewed amendment request because the proposed amendment would be futile, meaning it would not adequately state claims even if allowed. She identified two alternative reasons why the proposed complaint did not adequately allege trademark infringement or unfair competition: it did not adequately allege that the JERSEY CITY® mark had acquired secondary meaning, and the defendants’ fair-use defense would succeed based on Reveron’s own allegations. She also concluded that the proposed complaint did not adequately plead contributory infringement.

Judge Tarnofsky further recommended that Reveron not receive another opportunity to amend because she had already been told about deficiencies in her complaint but had not corrected them in the proposed amended complaint.

Objection and ruling

Reveron filed a limited objection challenging only the fair-use analysis. Walmart filed a response. Judge Cronan explained that the fair-use issue did not need to be decided because the failure to adequately allege secondary meaning independently supported denial of the amendment request. Reveron had not objected to the secondary-meaning analysis, and the parties had waived objections concerning that issue, the contributory-infringement conclusion, and the recommendation against another amendment opportunity.

Judge Cronan conducted a de novo review—the court’s independent review of the challenged and relevant portions—and found the recommendation well reasoned. He adopted the Report and Recommendation in part, excluding its alternative fair-use ground. Because that ground was not necessary to resolve the amendment request, Reveron’s objection to it was moot.

The court denied Reveron’s renewed motion for leave to amend and denied her leave to seek further amendment of the complaint. Walmart, Spreadshirt, Inc., and Sears Holdings Management Corp. were ordered to respond to the original complaint within fourteen days. The order also stated that, if any defendant moved to dismiss, Reveron would need to address why the dismissal grounds identified in that motion and in Judge Tarnofsky’s futility analysis did not require dismissal of her claims against all defendants. The Clerk of Court was directed to mail the order to Reveron, whom the order identifies as proceeding without a lawyer.