Reveron v. Spreadshirt, Inc.

Background

Stephanie M. Reveron applied to amend her complaint for a second time. She alleged federal and state trademark infringement and unfair competition based on the JERSEY CITY® mark, and the second proposed amended complaint added a claim for contributory trademark infringement. Reveron alleged that she acquired ownership of the brand name in December 2023, that her predecessors had sold clothing under it since at least 2001, and that the mark had been listed on the Supplemental Register since 2018.

The proposed complaint alleged that Spreadshirt, PlanetArt, Transform, Walmart, and other businesses sold clothing bearing the term JERSEY CITY online. It also alleged that some customers believed the defendants’ products were sponsored by Reveron. The second proposed amended complaint added allegations about advertising expenditures, sales, unsolicited media coverage, other alleged infringements, and the design of the clothing. PlanetArt had been dismissed from the case before this report and recommendation.

Legal standard

Under Rule 15 of the Federal Rules of Civil Procedure, a court generally should allow an amended pleading when justice requires, unless amendment would be futile. Amendment is futile when the proposed claims could not survive a motion to dismiss. Because Reveron was representing herself, the court considered the rule that self-represented litigants ordinarily should receive a reasonable opportunity to show that they have a valid claim.

Trademark and unfair-competition claims

The report concluded that the JERSEY CITY® mark was geographically descriptive. A geographically descriptive mark is generally protectable only if it has acquired “secondary meaning,” meaning that relevant consumers associate the term with one source. Reveron therefore needed to allege facts showing that the mark had acquired that association before the defendants began their alleged infringing use.

The report found the allegations insufficient. Reveron did not specify when the defendants began selling the challenged products, so the court could not determine whether the mark had acquired secondary meaning before that use began. The court analyzed six factors:

The report also examined the defendants’ fair-use defense. Fair use may protect a defendant’s use of a term in its ordinary descriptive sense rather than as a trademark identifying the source of goods. The report concluded that the proposed complaint and its exhibits showed that the defendants used JERSEY CITY as a geographical identifier, not as a source-identifying trademark. The exhibits also contradicted Reveron’s allegations that the defendants’ designs were evocative of her products: her mark had minimal stylization, while the defendants’ products used varied fonts, layouts, colors, and lettering styles.

The report further concluded that Reveron’s allegations about cease-and-desist letters did not establish bad faith. Knowledge of trademark ownership alone was insufficient, and continuing to use a geographically descriptive term after receiving a cease-and-desist letter did not itself establish bad faith. The report also stated that actual confusion or a likelihood of confusion would not defeat a fair-use defense when the term was used descriptively rather than as a trademark.

Contributory infringement

The proposed contributory-infringement claim was also found futile. Such a claim required allegations that a service provider knew, or had reason to know, that a particular party was engaging in trademark infringement and had sufficient control over the infringing activity. The report found that Reveron alleged only general knowledge that the defendants’ services were allegedly used for infringement. It did not identify specific infringing conduct of which the defendants had contemporaneous knowledge or explain how they exercised control over that conduct.

Disposition and procedure

Judge Robyn F. Tarnofsky recommended that the court deny with prejudice Reveron’s application for leave to file the second proposed amended complaint. The report says another opportunity to amend was unwarranted because Reveron had already received guidance about the pleading deficiencies and still did not provide the necessary facts. It separately recommends ordering Walmart, Spreadshirt, and Sears to respond to the original complaint within seven days after any order adopting the report and recommendation.

The report and recommendation was not itself described as the final ruling of the district court. The parties were given fourteen days to file objections under the applicable federal procedure, with any extension requests directed to District Judge John Cronan.