One Hanover, LLC v. Highgate Hotels, Inc.

Background

One Hanover, LLC co-owns a registered word trademark for “HARRY’S,” used in connection with a bar and restaurant in lower Manhattan. The mark was first used in 1972 and registered in 2019. The registration does not claim a particular font, size, or color.

The defendants manage and operate the Park Lane Hotel in midtown Manhattan. Since January 2022, the hotel has operated “HARRY’S NEW YORK BAR,” which is open to hotel guests and the public. Hanover alleged that the hotel’s bar had no relationship to Hanover’s restaurant and bar. Two months after the hotel bar opened, Hanover sent Highgate a letter demanding that it stop using “HARRY’S” in “HARRY’S NEW YORK BAR.”

Hanover’s amended complaint asserted two claims under federal trademark law: trademark infringement under 15 U.S.C. § 1125(a), and counterfeiting of a registered mark under 15 U.S.C. § 1114. The defendants moved to dismiss under Rule 12(b)(6), which allows dismissal when a complaint does not adequately state a legally plausible claim.

Trademark-infringement claims

The defendants argued that the amended complaint did not specifically allege that Witkoff and New Valley used the “HARRY’S NEW YORK BAR” mark in commerce. The court held that the complaint provided sufficient notice. It alleged that the defendants were using “HARRY’S” and “HARRY’S NEW YORK BAR” at the Park Lane Hotel and online, including on signs, menus, advertisements, and in connection with food, beverages, rooms, and hotel services.

The court stated that the allegations were made collectively against the defendants but were still sufficiently particularized to identify the claim and its basis against Witkoff and New Valley. The court also noted that the complaint did not allege other theories of liability against those defendants, such as contributory, alter-ego, or vicarious liability. The motion to dismiss the trademark-infringement claims against Witkoff and New Valley was denied.

Counterfeiting claim

The court explained that counterfeiting is an aggravated form of trademark infringement involving a mark that is fake and intended to suggest an erroneous origin. A statutory counterfeit must be identical or substantially indistinguishable from the registered mark. “Substantially indistinguishable” requires more than similarity or a colorable imitation; the marks must be nearly identical, with only minor differences that would not be apparent to an unwary observer.

The court compared “HARRY’S” with “HARRY’S NEW YORK BAR” as the marks would appear to an average consumer. It held that the words “NEW YORK BAR” were more than a minor difference and that “HARRY’S” could not be considered separately from the rest of the bar’s name. The court also held that the font and color used in the marks did not change the result because Hanover’s registration covered standard characters without limiting the font, size, or color. The court found that the bar’s mark was not a fake mark and granted the motion to dismiss the counterfeiting claim against all defendants.

Disposition

The court’s order states that the defendants’ motion to dismiss was denied in part and granted in part. The portion seeking to dismiss the trademark-infringement claims against Witkoff and New Valley was denied. The portion seeking to dismiss the counterfeiting claim against all defendants was granted.