Thursday LLC v. DNVB, Inc.

Background

Thursday LLC brought six claims against DNVB, Inc. concerning DNVB’s use of “Thursday Boot Co.” and related marks. The claims alleged infringement under Section 32 of the Lanham Act, false designation and unfair competition under Section 43(a) of the Lanham Act, dilution under New York law, New York common-law trademark infringement and unfair competition, and cancellation of DNVB’s “Thursday Everyday” trademark.

The complaint alleged that an earlier New Jersey limited liability company formed to represent the band “Thursday” had registered four Thursday trademarks. That company was cancelled in January 2012, after which Thursday LLC was formed in Delaware. Thursday LLC alleged that it had the same purpose, members, structure, tax identification number, and business activities as the earlier company and had continued using the marks. DNVB later applied to register several “Thursday Boot Co.” marks for goods including bags, wallets, footwear, jackets, and belts. The United States Patent and Trademark Office refused the applications based on a likelihood of confusion with the Thursday marks, but DNVB allegedly continued using the marks.

Standing

DNVB argued that Thursday LLC lacked standing because it did not own the registered trademarks. The court rejected the argument as a basis for dismissing the case at this stage, although it found that a trademark assignment executed after the lawsuit began could not retroactively establish standing. The court also said that corporate meeting minutes could not transfer legal title because they were not a written assignment instrument.

The court nevertheless found that the amended complaint plausibly alleged that Thursday LLC was the legal successor to the earlier New Jersey company and that the two entities were fundamentally the same apart from the state that issued the corporate charter. The court also found standing for Thursday LLC’s Section 43(a) claims because it plausibly alleged a commercial interest, direct competition with DNVB, and likely confusion or commercial injury. The court further held that Thursday LLC had the required commercial or financial interest to seek cancellation of DNVB’s “Thursday Everyday” mark. It noted that cancellation is a remedy rather than a separate cause of action but said that pleading it as a separate count did not require dismissal.

Failure to State a Claim

DNVB also sought dismissal under Rule 12(b)(6), which tests whether a complaint alleges enough facts to make a claim legally plausible. The court held that Thursday LLC alleged sufficient facts for trademark infringement, false designation of origin, and unfair competition under the Lanham Act. It found that the complaint plausibly alleged protected marks and a likelihood of confusion.

The court also found the allegations sufficient for New York trademark dilution because Thursday LLC alleged that its mark was strong and likely to be diluted by blurring or tarnishment. For New York common-law unfair competition, the court held that the allegations suggested bad faith and deception. In particular, Thursday LLC alleged that DNVB continued using the marks after the federal trademark office refused registration because of likely confusion, knew of Thursday LLC’s registered marks, and had asked Thursday LLC to consent to registration.

Disposition

The court denied DNVB’s motion to dismiss. It dismissed DNVB’s earlier motion for judgment on the pleadings as moot. The court directed the parties to appear for an initial pretrial conference on September 3, 2021, and directed the Clerk to terminate the open motions.