Bliss Trademark Holdings, LLC v. Blissy LLC

Background

Bliss Trademark Holdings, LLC alleged that its “Bliss” brand began as a New York City spa brand in the 1990s and has been used for skincare products sold through spas and major retail chains. The opinion states that the Patent and Trademark Office granted six federal registrations covering Bliss marks for various skincare products.

Bliss alleged that Blissy LLC was formed in 2019 and began selling sleep-related products and beauty accessories, including silk pillowcases. Blissy’s marks used the word “blissy” in lowercase, sans-serif lettering with blue-and-white color schemes. Bliss alleged that the marks were functionally identical to its own and that Blissy’s marketing connected its products with beauty and skincare benefits.

Bliss asserted claims for trademark infringement and unfair competition under sections 32(1) and 43(a) of the federal Lanham Act, New York common-law trademark infringement and unfair competition, trademark dilution under New York General Business Law section 360-1, and cancellation of Blissy’s trademark under 15 U.S.C. sections 1064 and 1119.

Motion to Dismiss

Blissy moved to dismiss under Rule 12(b)(6), which tests whether a complaint alleges enough facts to state a legally plausible claim. Blissy argued that Bliss had not adequately alleged a likelihood of consumer confusion, trademark blurring or tarnishment, or a basis for cancellation. Blissy also argued that laches—an equitable defense based on unreasonable delay—barred the claims. Alternatively, Blissy requested a stay while related opposition proceedings were pending before the Trademark Trial and Appeal Board.

Trademark Infringement and Unfair Competition

For the federal trademark and related New York common-law claims, the court explained that the plaintiff must plausibly allege that its mark is distinctive and that the defendant’s use is likely to confuse consumers. Blissy conceded that Bliss satisfied the distinctiveness requirement but disputed likely confusion.

The court applied the eight-factor test used in the Second Circuit, which considers the mark’s strength, the similarity of the marks, the proximity and competitiveness of the products, the possibility that the prior owner will enter the defendant’s market, actual confusion, the defendant’s good faith, the quality of the defendant’s products, and the sophistication of buyers.

The court found that Bliss had adequately alleged several relevant facts: the Bliss marks had been used since 1996 and were federally registered; the marks used variations of the same word, lowercase sans-serif lettering, and similar colors; the parties’ products and sales channels overlapped; and Blissy allegedly marketed its products as beauty products. The complaint did not allege actual confusion, the quality of Blissy’s products, or the sophistication of consumers, but the court held that those omissions did not defeat the claims at the motion-to-dismiss stage. The court also found that Bliss had plausibly alleged bad faith for its New York common-law unfair competition claim.

Trademark Dilution

The court held that Bliss plausibly alleged that the Bliss marks were distinctive or had acquired a secondary meaning. It also found that Bliss had alleged enough facts to support a possible likelihood of dilution by blurring or tarnishment, particularly the alleged similarity of the marks and the competitive proximity of the products. The court stated that the fact-intensive issues raised by Blissy were not appropriate for resolution on a motion to dismiss.

Trademark Cancellation

Blissy conceded that the cancellation claim rose or fell with the trademark infringement claim. Because the court allowed the infringement claim to proceed, it also held that Bliss had adequately alleged its cancellation claim under 15 U.S.C. sections 1064 and 1119.

Laches and Stay Request

The court rejected Blissy’s laches argument. The complaint alleged that Blissy first applied to register a Blissy mark on March 21, 2019, based on a first-use date of March 15, 2019, while Bliss filed the complaint on March 3, 2025. The court concluded that the claims, as alleged, were filed within six years and therefore were not subject to dismissal on laches grounds.

The court also declined to stay the case. While Blissy had asked the court to wait for opposition proceedings before the Trademark Trial and Appeal Board, those proceedings had been suspended pending final resolution of this action. The court stated that a stay was not warranted under those circumstances.

Disposition

In a conclusion dated July 20, 2025, Judge Lewis A. Kaplan denied Blissy’s motion to dismiss. The opinion therefore allowed Bliss’s asserted claims to remain pending at this stage; it did not decide whether Bliss would ultimately prevail on those claims.