DFO Global Performance Commerce Limited v. Nirmel
- James Oetken
- 1:20-cv-06093
- U.S. District Court · Southern District of New York
- 1
In DFO Global Performance Commerce v. Nirmel, Judge Oetken allowed defendants to pursue a new “Blaux” pronunciation theory through discovery.
The defendants may pursue their proposed pronunciation theory through discovery concerning the trademark and unfair competition claims; the order does not otherwise resolve those claims.
What happened
In DFO Global Performance Commerce Limited (Nevada), et al. v. Krishna Delahunty Nirmel, et al., the court revisited its earlier conclusion that “Blaux” was an inherently distinctive brand name. Defendants had newly proposed that “Blaux” might be pronounced like “blow.”
The court said that theory was relevant to the trademark and unfair competition claims and that defendants were free to pursue it through discovery. The court explained that its earlier ruling on a motion to dismiss could be reconsidered if discovery or later legal developments changed the analysis.
Judge Oetken ordered that defendants could pursue the pronunciation theory through discovery. The opinion did not otherwise decide the trademark or unfair competition claims.
The detailed version
- DFO Global Performance Commerce Limited v. Nirmel · No. 1:20-cv-06093
- James Oetken
- Aug. 16, 2021
Background
In an August 6, 2021 opinion and order, the court concluded that the “Blaux” brand name was “inherently distinctive.” The court had based that conclusion on defendants’ failure to identify any similarity between “Blaux” and an ordinary word.
Defendants’ New Theory
Defendants then proposed, for the first time, that “Blaux” is pronounced “/blow/” or “/bloh/” and resembles the word “blow.” The opinion states that this theory is relevant to the trademark and unfair competition claims.
Court’s Ruling
The court said defendants were free to pursue the pronunciation theory through discovery. It explained that the law-of-the-case doctrine—the principle that courts generally adhere to earlier rulings in the same case—does not prevent reconsideration of issues initially raised in a motion to dismiss when discovery or later developments in the law alter the analysis. The court did not otherwise resolve the trademark or unfair competition claims in this order. Judge Oetken ordered the matter accordingly.
Read the full 1-page opinion on CourtListener, the free public archive maintained by the Free Law Project.