Khan v. Addys BBQ LLC

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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ADNAN ALAM KHAN,

Plaintiff,

OPINION AND ORDER

-against- 19-cv-2235 (SJF)(AYS)

ADDY’S BBQ LLC and NAUMAN CHEEMA,

Defendants.

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FEUERSTEIN, United States District Judge

On April 16, 2019, plaintiff Adnan Alam Khan (“plaintiff” or “Khan”) commenced this

action against defendants Addy’s BBQ LLC (“Addy’s BBQ”) and Nauman Cheema (“Cheema”)

(collectively, “defendants”), alleging, inter alia, trademark infringement, false designation of

origin and unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. §

1125(a)(1)(A), and New York common law; trademark dilution in violation of the Federal

Trademark Dilution Act (“FTDA”), 15 U.S.C. § 1125(c), and Section 360-l of the New York

General Business Law; and cybersquatting in violation of the Anticybersquatting Consumer

Protection Act (“ACPA”), 15 U.S.C. § 1125(d). Presently before the Court are: (i) plaintiff’s

motion pursuant to Rule 65 of the Federal Rules of Civil Procedure for a temporary restraining

order (“TRO”) and preliminary injunction enjoining and restraining defendants from using the

mark, “Addy’s BBQ,” and the domain name, http://addysbbq.com/; and (ii) defendants’ cross

motion to cancel plaintiff’s registration of the service mark, “Addy’s Barbeque,” pursuant to

Section 37 of the Lanham Act, 15 U.S.C. § 1119. For the reasons set forth herein, plaintiff’s

motion is denied in its entirety; and defendants’ cross motion is granted to the extent that

defendants are granted leave to amend their answer to assert a counterclaim seeking to cancel

plaintiff’s registration of his service mark pursuant to Section 37 of the Lanham Act, 15 U.S.C. §

1119 on the basis that the registration was obtained fraudulently, and their cross motion is

otherwise denied.

I. BACKGROUND

A. Factual Background

Plaintiff is a self-proclaimed “professional Chef,” (Declaration of Adnan Alam Khan in

Support of Motion for TRO [“Plf. Decl.”], ¶ 2)1, who also goes by the name “Addy” or “Chef

Addy.” (Id., ¶ 3). In or around March 2015, plaintiff opened a restaurant named “Addy’s

Barbeque,” located at 1199 Teaneck Road, Teaneck, New Jersey, 07666 (the “Teaneck

restaurant”). (Id., ¶ 2).

In or about November 2017, Cheema met with plaintiff in New Jersey and “expressed

interest in opening up a restaurant on Long Island, New York.” (Declaration of Nauman Cheema

in Support of Cross Motion and in Opposition to Motion for a TRO [“Cheema Decl.”], ¶ 3).

According to Cheema, plaintiff “expressed great joy in this proposal . . . since he had just earlier

that day put his restaurant in Teaneck, New Jersey up for sale.” (Id.; see also Id., ¶ 5 [asserting

that when Cheema “initially met plaintiff . . . his [Teaneck] restaurant was failing”]). Cheema’s

brother, Umar Cheema (“Umar”), who is the head chef at the Long Island restaurant

subsequently opened by plaintiff and Cheema, also asserts that plaintiff “was very grateful that

[his] brother [Cheema] helped him out.” (Declaration of Umar Cheema in Support of Cross

1 To the extent plaintiff’s assertions in his declaration in opposition to defendants’ cross motion merely reiterate the

assertions in his declaration in support of his motion for injunctive relief, they are not repeated or cited herein. Only

those non-conclusory assertions in plaintiff’s declaration in opposition to defendants’ cross motion that are based

upon his personal knowledge and offer new evidence material to the outcome of the parties’ motions are set forth

herein.

Motion and in Opposition to Motion for a TRO [“Umar Decl.”], ¶ 4). However, according to

plaintiff, “one of the reasons . . . [Cheema] approached [him] was” because his Teaneck

restaurant “had established a solid reputation and attracted the attention of many consumers of

halal food[] because . . . [it] was among the first restaurants serving exclusively halal meat in the

Tri-State area.” (Plf. Decl., ¶ 6).

In December 2017, plaintiff entered into a partnership with Cheema to open and operate a

restaurant located at 799 Elmont Road, Elmont, New York, 11003 (the “Elmont restaurant”),

which they named “Addy’s BBQ.”2 (Plf. Decl., ¶¶ 4, 7; Cheema Decl., ¶¶ 4, 6). Although the

parties dispute whether their partnership agreement was ever memorialized in writing, (compare

Plf. Decl., ¶ 8 [claiming that there was never a written partnership agreement] with Cheema

Decl., ¶ 6 [claiming that there was a written partnership agreement, but that he does not have a

copy of it]), neither party has produced a copy of any written partnership agreement between

them.

According to Cheema, under the terms of the partnership agreement, inter alia, (a) he

owned seventy percent (70%) of the Elmont Restaurant and plaintiff owned thirty percent (30%);

(b) “[s]ince plaintiff had no capital to invest he brought his Teaneck restaurant into the

partnership with the same split;” (c) Cheema “would have first right of refusal in the next five (5)

businesses that plaintiff would start, if any;” (d) plaintiff would receive a monthly payment of six

thousand dollars ($6,000.00), but Cheema “took nothing and reinvested everything back into the

business;” and (e) “if anything happened to plaintiff’s family they would be taken care of from

the businesses.” (Cheema Decl., ¶ 6; see also Id., ¶ 13 [claiming a seventy percent (70%) interest

2 According to Cheema, he and plaintiff “purposely did not want to use the name Addy’s Barbeque because plaintiff,

upon information and belief, had tax liens filed against him and the Teaneck business.” (Cheema Decl., ¶ 4; See also

Id., ¶ 8).

in both the Elmont and Teaneck restaurants]). Plaintiff disputes that Cheema was ever given an

ownership interest in the Teaneck restaurant, (Plf. Decl., ¶ 5), but does not indicate what any of

the specific terms of the alleged partnership agreement were.3

The Elmont restaurant opened in January 2018. (Plf. Decl., ¶ 7). According to Cheema,

his “responsibilities included floor management, focusing on business growth, accounting and

marketing[,]” whereas plaintiff “was to create the menu and be in charge of the kitchen.”

(Cheema Decl., ¶ 7). Cheema further asserts, inter alia, that he “kept investing in the renovation,

marketing, store front and the purchase of equipment[;]” and he “also formed the company

Qabila Afghan Grill, LLC [‘QAG’] DBA Addy’s BBQ,” but plaintiff’s “name was not on the

company papers or the lease. . . .”4 (Id., ¶ 8).

According to plaintiff, his “business relationship with Cheema was not profitable or

harmonious from the very beginning[,]” (Plf. Decl., ¶ 10), and “[t]here were several issues

between [him] and Cheema, as the way [Cheema] managed the [Elmont] restaurant did not

satisfy [plaintiff’s] criteria and . . . expectations.” (Id., ¶ 11). Plaintiff also asserts that he was not

satisfied with “the supplier and the quality of the meats offered;” the competency,

professionalism or “quality” of the personnel and waitstaff; or “the conditions in the kitchen” of

the Elmont restaurant. (Id., ¶¶ 12-13).

However, according to Cheema, “[d]espite plaintiff’s claims to the contrary,” the

partnership “got off to a pretty good start and in [their] first month [they] did approximately

$30,000 worth of business. In March and April, 2018 [they] did about $50,000 worth of business

3 Indeed, plaintiff inconsistently contends that the relationship between the parties was that of a partnership, a

licensor/licensee and a franchisor/franchisee, but offers no evidence in support thereof and does not identify the

specific terms of any type of agreement between the parties.

4 According to the New York State Department of State (“NYSDOS”) website, the initial NYSDOS filing date for

QAC was November 28, 2017. See https://appex20.dos.ny.gov/ (last visited 10/21/2019).

each month.” (Cheema Decl., ¶ 9). Cheema further asserts that plaintiff and/or his wife “received

monthly checks” from the Elmont restaurant, (id.), and he submits six (6) checks payable to

plaintiff and/or his wife by QAC from March 2018 to July 2018, five (5) of which contain the

notation “salary” on the memo line. (Id., Ex. A). According to plaintiff, those checks “were

given to [him] as a [sic] compensation for [his] work at the [Elmont] restaurant. Throughout the

duration of the partnership, [he] was working long hours every day, all day into the night

preparing meals and training employees.” (Plaintiff’s Declaration in Opposition to Defendants’

Cross Motion [“Plf. Opp.”], ¶ 13).

In July 2018, plaintiff “decided to depart the partnership.” (Plf. Decl., ¶ 9; see also

Cheema Decl., ¶ 11). According to plaintiff, upon his departure, he “left equipment and several

objects at the Elmont restaurant” and made it clear to Cheema that he could “keep all of them, as

long as, he stops using [plaintiff’s] name (‘Chef Addy’ or ‘Addy’) and [plaintiff’s] brand name

(Addy’s Barbeque)[,]” (Plf. Decl., ¶ 14), because he did not want the Teaneck restaurant to be

associated with the Elmont restaurant.5 (Id.). Plaintiff asserts that defendant neither returned the

equipment that he left at the Elmont restaurant, nor stopped using plaintiff’s purported “brand

name despite [plaintiff] forbidding him from doing so.” (Plf. Decl., ¶ 15; see also Id., ¶ 16

[claiming that plaintiff “explicitly forbade [Cheema] from using [his] name or trademark”]).

According to plaintiff, he “never allowed [Cheema] to use [his] name or received consideration

in order to grant him a permission to conduct business under [plaintiff’s] trademark and name.”

(Id., ¶ 16; see also Plf. Opp., ¶ 12 [asserting, inter alia, that after plaintiff left the partnership, he

“explicitly forbade [Cheema] from using [his] name or trademark”]).

5 Plaintiff also asserts that he did not want another restaurant that he opened in Astoria, New York to be associated

with the Elmont restaurant. (Plf. Decl., ¶ 14). However, it is undisputed that plaintiff did not open the Astoria

restaurant until approximately four (4) months after his departure from the partnership with Cheema.

However, Cheema asserts that after plaintiff left the partnership, he consented to

defendants continued use of the name “Addy’s BBQ.” (Cheema Decl., ¶ 13). In support of that

assertion, defendants submit a screenshot of a partial text message sent by plaintiff on September

7, 2018 indicating, in relevant part, “You were right in saying nothing there is mine, as when I

left I left it all to you. As for the name, recipes and menu I did give you open heartedly without

falter and that too is yours. . . . This is the last you’ll hear from me. I forgive you for any

wrongdoing . . . and ask you do the same, and no, you’re not a liar or a thief, but someone I still

love and respect dearly. . . .”6 (Id., Ex. C) (emphasis added). In addition, Umar avers, inter alia,

that “[o]n multiple occasions plaintiff personally told [him] that the name of the Elmont

restaurant belonged to [Cheema].” (Umar Decl., ¶ 4).

In August or November 2018, plaintiff opened another restaurant named “Addy’s

Barbeque,” located at 30-94 Steinway St., Astoria, New York 11103 (the “Astoria restaurant”).

(Plf. Decl., ¶ 2; Cheema Decl., ¶ 12). Cheema never had any ownership interest in the Astoria

restaurant. (Plf. Decl., ¶ 5). However, according to Cheema, the Astoria restaurant “was [his]

idea and location while [they] were partners. . . .” (Cheema Decl., ¶ 12).

Subsequently, on February 21, 2019, i.e., approximately seven (7) months after leaving

the partnership, plaintiff filed an application with the United States Patent and Trademark Office

(“USPTO”) to register the service mark, “Addy’s Barbeque,” consisting of “standard characters,

without claim to any particular font style, size, or color,” but disclaiming the exclusive right to

use the word “barbeque,” on the Principal Register for International Class 43: “Restaurant

services; Restaurant services, including sit-down service of food and take-out restaurant

6 Cheema also submits an apparent post from plaintiff’s Facebook page as evidence, inter alia, that “[t]here was no

ill will or bad blood between [the parties].” (Cheema Decl., Ex. D). However, there is no URL indicating the source

of that post on the exhibit.

services.” (Plf. Decl., Ex. G). Plaintiff claimed first use of the service mark “[a]t least as early

as” February 5, 2015, and first use in commerce of the mark “[a]t least as early as” March 22,

2015. (Id.). The mark was published in the Trademark Official Gazette on June 25, 2019, and no

opposition thereto was filed during the thirty (30)-day opposition period, i.e., by July 25, 2019.

(Id.). The mark was registered on September 10, 2019. (Plf. Opp., Ex. A).

On or about February 27, 2019, plaintiff’s attorneys sent Cheema a “Demand to Cease

and Desist” letter (the “cease and desist letter”), inter alia, demanding that Cheema

“immediately: (i) cease and desist [his] unauthorized use of Addy’s BBQ’s name as well as

[plaintiff’s] name; (ii) provide [them] with prompt written assurance that [he] will cease and

desist from further use of Addy’s BBQ’s name and [plaintiff’s] name; and (iii) immediately

return all items brought by [plaintiff] to the Elmont location.” (Plf. Decl., Ex. F). According to

Cheema, plaintiff subsequently called and told him “to ignore the letter as it was only sent at the

insistence of his attorneys.” (Cheema Decl., ¶ 17).

Plaintiff contends, inter alia, that “Cheema, by using a confusingly similar variation to

[his] trademark, intends to compete unlawfully and unfairly against [plaintiff’s] business, and to

steal [his] customers who are fans of [his] recipes.” (Plf. Opp., ¶ 17). Cheema, on the other hand,

asserts that plaintiff filed the application for a trademark “in a bad faith effort to harm [his]

business and infringe on the success” of the Elmont restaurant, (Cheema Decl., ¶ 14); and that

the “Addy’s BBQ mark was in exclusive use prior to March, 2019 so plaintiff’s infringement

claim should fail.” (Id., ¶ 17).

Plaintiff asserts that many customers go to defendants’ Elmont restaurant “because they

mistakenly believe that . . . [it] is affiliated with” his Teaneck and Astoria restaurants.” (Plf.

Decl., ¶ 17). In support of that assertion, plaintiff submits various comments and reviews from

anonymous individuals on the “Yelp” website indicating that some consumers presumed that

there is or was an association between the Elmont restaurant and the Teaneck and/or Astoria

restaurants.7 (Id., Ex. A).

7 While the anonymous internet reviews do not constitute hearsay, see, e.g. Sarkis’ Café, Inc. v. Sarks in the Park,

LLC, No. 12 C 9686, 2016 WL 723135, at * 8 n. 15 (N.D. Ill. Feb. 24, 2016); You Fit, Inc. v. Pleasanton Fitness,

LLC, No. 8:12-cv-1917-T-27EAJ, 2013 WL 521784, at * 5 n. 13 (M.D. Fla. Feb. 11, 2013), the Court finds that

those submitted by plaintiff are insufficient to establish a likelihood of confusion, particularly since, inter alia, of the

ten (10) reviews that suggest any association between defendants’ Elmont restaurant and the Teaneck and/or Astoria

restaurants, all except four (4) are dated during the period when the partnership between plaintiff and Cheema

existed and, thus, when there was an association between the restaurants, (Plf. Decl., Ex. A [compare reviews dated

4/15/2018, 2/3/2018, 4/26/18 (by Iconic 1. and Mishal S.), 5/19/2018, 6/30/2018 with reviews dated 1/25/2019,

5/1/2019 (from Ashaab A. and Fayek C.) and 5/5/2019]); and one (1) of the four (4) reviews dated after plaintiff left

the partnership (hereinafter referred to as a “post-partnership review”) specifically disclaims any continued

association between the restaurants, i.e., the review dated January 25, 2019 provides, in relevant part, “We asked the

owner [of the Elmont restaurant] if they were the same chain – he said they used to be, but decided to go separate

ways.” (Id.). Likewise, the post-partnership review dated May 5, 2019 actually states, in pertinent part, “Scam.

Copyright infringement possibly. Avoid. Go to Astoria or Teaneck as those locations are original[,]” (id.) (emphasis

added), thus suggesting that the reviewer was also aware that the Elmont restaurant was not associated with the

Teaneck and Astoria restaurants. Therefore, two (2) of the four (4) post-partnership reviews suggesting any

affiliation between plaintiff’s and defendants’ restaurants actually indicate that consumers were able to recognize

that there had been a change of ownership. See, e.g. Rib City Franchising, LLC v. Bowen, No. 2:15-cv-00636, 2015

WL 6695723, at * 5 (D. Utah Nov. 3, 2015). In addition, although the review dated March 17, 2018, i.e., while the

partnership still existed, indicates, in relevant part, “I’m so glad that we don’t have to drive out to Queens or the city

for a delicious, halal burger[,]” (Plf. Decl., Ex. A), the reference to Queens clearly does not refer to the Astoria

restaurant, as it was not opened until eight (8) months thereafter. Rather, that review suggests that while there were

other restaurants offering halal meat in New York City, including Queens, the Elmont restaurant filled a void in that

local area, i.e., western Nassau County, for such food.

Moreover, while the printout with the URL https://www.yelp.com/biz/addys-bbq-elmont-2?start=60, dated July 31,

2019, indicates that there were ten (10) pages printed, plaintiff only submitted pages seven (7) through nine (9)

thereof, with no explanation for the omission of the first six (6) pages. Similarly: (a) the printout with the URL

https://www.yelp.com/biz/addys-bbq-elmont-2, dated July 31, 2019, indicates that there were thirteen (13) pages

printed, but plaintiff only submitted pages eight (8) and nine (9) thereof, with no explanation for the omission of the

other eleven (11) pages; (b) the printout with the URL https://www.yelp.com/biz/addys-bbq-elmont-2?start=20,

dated July 31, 2019, indicates that there were twelve (12) pages printed, but plaintiff only submitted pages four (4)

and ten (10) thereof, with no explanation for the omission of the other ten (10) pages; (c) the printout with the URL

https://www.yelp.com/biz/addys-bbq-elmont-2?start=80, dated July 31, 2019, indicates that there were eight (8)

pages printed, but plaintiff only submitted page two (2) thereof, with no explanation for the omission of the other

seven (7) pages; (d) the printout with the URL https://www.yelp.com/biz/addys-bbq-elmont-2?start=40, dated July

31, 2019, indicates that there were ten (10) pages printed, but plaintiff only submitted page eight (8) thereof, with no

explanation for the omission of the other nine (9) pages; and (e) and the printout with the URL

https://www.yelp.com/biz/addys-bbq-elmont-2?start=120, dated July 31, 2019, indicates that there were six (6)

pages printed, but plaintiff only submitted page three (3) thereof, with no explanation for the omission of the other

five (5) pages. The Court infers from plaintiff’s omission of those pages that approximately forty-eight (48) of the

fifty-nine (59) pages printed on July 31, 2019 contained reviews or comments that made no association between

Cheema’s Elmont restaurant and plaintiff’s Teaneck and/or Astoria restaurants, either before or after the parties’

partnership ended.

According to Cheema, “[i]n or about March, 2019 plaintiff called [him] to apologize on

behalf of his brother and his friends who he directed to go on social media and post negative and

borderline slanderous statements about [him] and the Elmont restaurant.” (Cheema Decl., ¶ 17).

Plaintiff also asserts that on one (1) occasion, on or about July 26, 2019, he received

invoices from his own meat supplier that purportedly “were intended to be sent to Defendants,”

which allegedly “shows the confusion in the mind of the meat supplier as to whether [plaintiff’s]

restaurants and the Elmont restaurant are affiliated or part of the same brand.” (Plf. Decl., ¶ 18).

In support thereof, plaintiff submits what appears to be screenshots from an unidentified cellular

telephone with images of two (2) invoices, both dated July 26, 2019. (Id., Ex. B). Under the

phrase “BILL TO,” (a) one (1) of the invoices indicates only “Addys BBQ,” without an address

or a person to whose attention it was directed; and (b) the other invoice indicates “Honest

Butcher,” located at 791 Elmont Road, Elmont, New York, (id., Ex. B), which presumably is a

business located near the Elmont restaurant. (Plf. Decl., ¶ 7).

Plaintiff also submits, as “some examples where Defendants advertised and promoted

their restaurant using [plaintiff’s] name and [his] successful business,” (Plf. Decl., ¶ 19): (i) a

printout with the URL https://www.facebook.com/pg/addybbqelmont/about/, dated April 15,

2019, indicating, inter alia, that the Elmont restaurant started on December 19, 2018 and that

“Adnan Alam Khan (Chef Addy),” i.e., plaintiff, was part of its culinary team; and (ii) two (2)

pages of a fifteen (15)-page printout with the URL https://www.yelp.com/biz/addys-bbq-elmont-

2, dated May 15, 2019, indicating, inter alia, under the heading, “About the Business,” that the

Elmont restaurant was “[e]stablished in 2018. After a huge success of Addys BBQ NJ. We

humbly open doors to our location in Elmont, NY.” (Plf. Decl., Ex. C).

In addition, plaintiff submits the delivery menu for his Teaneck restaurant, as listed on

the Grubhub website, https://www.grubhub.com/restaurant/addys-bbq-1199-teaneck-rd-

teaneck/881380, as of August 8, 2019, and the menu for defendants’ Elmont restaurant, as listed

on the Seamless website, https://www.seamless.com/menu/addys-bbq-799-elmont-rd-

elmont/986851, as of August 8, 2019, as purported support for his assertion that the Elmont

restaurant “offers many menu items which [he] created, designed, and named and which [he] had

been offering at the Teaneck restaurant prior to the opening of the Elmont restaurant.”8 (Plf.

Decl., ¶ 20 and Ex. D and E).

In or around August 2019, the Teaneck restaurant was closed. (See Cheema Decl., ¶¶ 5,

11 and Ex. B).

B. Procedural History

On April 16, 2019, plaintiff commenced this action against defendants alleging, inter

alia, trademark infringement, false designation of origin and unfair competition in violation of

Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and New York common law;

trademark dilution in violation of the FTDA, 15 U.S.C. § 1125(c), and N.Y. Gen. Bus. Law §

360-l; and cybersquatting in violation of the ACPA, 15 U.S.C. § 1125(d).

8 Plaintiff’s assertions, inter alia, that he has been informed by an unidentified person or persons “that the similarity

of the restaurants’ menu items has contributed to the confusion among customers as to whether Defendants’

restaurant is affiliated with [his],” (Plf. Decl., ¶ 21); and that “various customers believe” that the Elmont restaurant

“offers substandard food,” (id., ¶ 29), constitute inadmissible hearsay. Moreover, plaintiff’s conclusory and

unsupported assertions, e.g. that he “lose[s] customers every day because many customers, especially those residing

in Long Island, visit Defendants’ restaurant for [his] recipes,” (id., ¶ 24; Plf. Opp., ¶ 15); that he suffered a

“significant drop on [his] revenues,” (Plf. Decl., ¶ 25; Plf. Opp., ¶ 16); that he “managed to build and establish [his]

good reputation as Chef Addy” as a result of the “high quality standards” he maintained at the Teaneck and Astoria

restaurants, (Plf. Decl., ¶ 26); that his “business reputation and goodwill have been injured,” (Plf. Opp., ¶ 18); etc.,

are entitled to little or no weight.

Plaintiff now moves pursuant to Rule 65 of the Federal Rules of Civil Procedure for a

TRO and preliminary injunction enjoining and restraining defendants from using the mark

“Addy’s BBQ,” and the domain name, http://addysbbq.com/; and defendants cross-move to

cancel plaintiff’s service mark, “Addy’s Barbeque,” pursuant to Section 37 of the Lanham Act,

15 U.S.C. § 1119.

II. DISCUSSION

A. Plaintiff’s Motion for Injunctive Relief

1. Standard of Review

“A preliminary injunction is an equitable remedy and an act of discretion by the court.”

American Civil Liberties Union v. Clapper, 804 F.3d 617, 622 (2d Cir. 2015). “The purpose of

such interim equitable relief is not to conclusively determine the rights of the parties, . . . but to

balance the equities as the litigation moves forward.” Trump v. International Refugee Assistance

Project— U.S. —, 137 S. Ct. 2080, 2087, 198 L. Ed. 2d 643 (2017) (quotations and citations

omitted).

“A party seeking a preliminary injunction must demonstrate: (1) a likelihood of success

on the merits or [] sufficiently serious questions going to the merits to make them a fair ground

for litigation and a balance of hardships tipping decidedly in the plaintiff’s favor; (2) a likelihood

of irreparable injury in the absence of an injunction; (3) that the balance of hardships tips in the

plaintiff’s favor; and (4) that the public interest would not be disserved by the issuance of an

injunction.” Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887, 895 (2d Cir. 2015)

(quotations, alterations and citation omitted); see also North American Soccer League, LLC v.

United States Soccer Fed’n, Inc. (“NASL”), 883 F.3d 32, 37 (2d Cir. 2018) (“A party seeking a

preliminary injunction must show (1) irreparable harm; (2) either a likelihood of success on the

merits or both serious questions on the merits and a balance of hardships decidedly favoring the

moving party; and (3) that a preliminary injunction is in the public interest.”) “[A] preliminary

injunction is ‘an extraordinary remedy never awarded as of right[,]’” Benisek v. Lamone, --- U.S.

---, 138 S. Ct. 1942, 1943, 201 L. Ed. 2d 398 (2018) (quoting Winter v. Natural Res. Defense

Council, Inc., 555 U.S. 7, 24, 129 S. Ct. 365, 172 L. Ed. 2d 249 (2008)), and “should not be

granted unless the movant, by a clear showing, carries the burden of persuasion.” Sussman v.

Crawford, 488 F.3d 136, 139-40 (2d Cir. 2007) (quoting Mazurek v. Armstrong, 520 U.S. 968,

972, 117 S. Ct. 1865, 138 L. Ed. 2d 162 (1997) (emphasis in original)); accord Capstone

Logistics Holdings, Inc. v. Navarrete, 736 F. App’x 25, 26 (2d Cir. Aug. 31, 2018)(summary

order).

2. Likelihood of Success on the Merits

a. Trademark Infringement Claims9

Section 43(a)(1)(A) of the Lanham Act imposes liability upon “[a]ny person who, on or

in connection with any goods or services, . . . uses in commerce any word, term, name, symbol,

or device, or any combination thereof, or any false designation of origin, false or misleading

description of fact, or false or misleading representation of fact, which-- (A) is likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of

such person with another person, or as to the origin, sponsorship, or approval of his or her goods,

services, or commercial activities by another person. . . .” 15 U.S.C. § 1125(a)(1)(A).

9 “The elements of a cause of action for New York common law infringement and for unfair competition mirror the

requirements of claims stated under the Lanham Act[.]” Museum of Modern Art v. MOMACHA IP LLC, 339 F.

Supp. 3d 361, 372 (S.D.N.Y. 2018) (quotations, alterations and citation omitted); accord ESPN, Inc. v. Quiksilver,

Inc., 586 F. Supp. 2d 219, 230 (S.D.N.Y. 2008).

“A claim of trademark infringement under the Lanham Act is analyzed under a two-

prong test[,]” Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016),

pursuant to which the court first considers “whether the senior user’s mark is entitled to

protection; . . . [then] to whether the junior user’s use of its mark is likely to cause consumers

confusion as to the origin or sponsorship of the junior user’s goods.” Id.; see also Excelled

Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., 897 F.3d 413, 417 (C.A.2, 2018) (“The

test for trademark infringement looks first to whether the plaintiff’s mark is entitled to

protection, and second to whether defendant’s use of the mark is likely to cause consumers

confusion as to the origin or sponsorship of the defendant’s goods.” (quotations, alterations and

citation omitted)). Thus, “[t]he plaintiff in a trademark infringement action establishes a

likelihood of success by showing both 1) a legal, exclusive right to the mark, and 2) a likelihood

that customers will be confused as to the source of the infringing product.” Otokoyama Co. Ltd.

v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir. 1999).

i. Legal, Exclusive Right to the Mark

“Whether a mark is entitled to protection depends, in part, upon a showing of prior use.”

Excelled Sheepskin, 897 F.3d at 417. “Common law trademark rights derive from ‘initial

appropriation and use [ ] accompanied by an intention to continue exploiting the mark

commercially.’” Id. at 418 (brackets in original) (quoting La Societe Anonyme des Parfums le

Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974)). “To prove bona fide usage, the

proponent of the trademark must demonstrate that his use of the mark has been deliberate and

continuous, not sporadic, casual or transitory....” Id. (quoting La Societe, 495 F.2d at 1271-72).

Plaintiff correctly contends that “a certificate of registration with the [US]PTO is prima

facie evidence that the mark is registered and valid (i.e., protectable), that the registrant owns the

mark, and that the registrant has the exclusive right to use the mark in commerce.” Guthrie, 826

F.3d at 37 (quotations and citation omitted); accord Christian Louboutin, S.A. v. Yves Saint

Laurent Am. Holdings, Inc., 696 F.3d 206, 224-25 (2d Cir. 2012); see also 15 U.S.C. § 1057(b)

(“A certificate of registration of a mark upon the principal register provided by this chapter shall

be prima facie evidence of the validity of the registered mark and of the registration of the mark,

of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered

mark in commerce on or in connection with the goods or services specified in the certificate,

subject to any conditions or limitations stated in the certificate.”) However, this “statutory

presumption may be overcome,” Excelled Sheepskin, 897 F.3d at 419, if the allegedly infringing

party demonstrates by a preponderance of the evidence “that the mark is ineligible for

protection.” Christian Louboutin, 696 F.3d at 216 n. 10; see also Lane Capital Mgmt., Inc. v.

Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999) (“[W]hen a plaintiff sues for

infringement of its registered mark, the defendant bears the burden to rebut the presumption of

mark’s protectibility [sic] by a preponderance of the evidence.”).

“As a general matter, registration creates no substantive trademark rights against

infringement beyond the common law rights acquired through use of the mark.” Excelled

Sheepskin, 897 F.3d at 419 (quoting Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 118

(2d Cir. 1999)); see also ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 146 (2d Cir. 2007)

(“[T]rademark rights are acquired and maintained through use of a particular mark[,] . . . even of

marks that have been registered with the [USPTO] . . . . Indeed, one of the fundamental premises

underlying the registration provisions in the Lanham Act is that trademark rights flow from

priority and that priority is acquired through use.”); La Societe, 495 F.2d at 1271 (“There is no

such thing as property in a trade-mark except as a right appurtenant to an established business or

trade in connection with which the mark is employed. The law of trademarks is but a part of the

broader law of unfair competition; the right to a particular mark grows out of its use, not is [sic]

mere adoption; its function is simply to designate the goods as the product of a particular trader

and to protect his good will against the sale of another’s product as his; and it is not the subject

of property except in connection with an existing business.”)

Since, as set forth below, plaintiff has not established a likelihood of confusion, a

likelihood of irreparable harm absent injunctive relief or that the balance of equities weigh in

favor of granting him injunctive relief, it is presumed, without deciding, for purposes of this

motion only, that plaintiff has a legal, exclusive right to the mark.

ii. Likelihood-of-Confusion

Plaintiff has not established a likelihood of success on the merits, much less a clear or

substantial likelihood of success on the merits, on his claim that consumers will likely be

confused as to the source, sponsorship or affiliation of the Elmont restaurant. “The likelihood-of-

confusion prong turns on whether ordinary consumers are likely to be misled or confused as to

the source of the product in question because of the entrance in the marketplace of the junior

user’s mark.” Guthrie, 826 F.3d at 37 (quotations, alterations and citation omitted).

“[S]atisfaction of the likelihood-of-confusion standard requires a probability of confusion, not a

mere possibility.” Id. (quotations and citation omitted); see also Star Indus., Inc. v. Bacardi &

Co., Ltd., 412 F.3d 373, 383 (2d Cir. 2005) (“To prevail in a trademark infringement action

under the Lanham Act, a plaintiff must prove, in addition to protectability of the mark, a

probability of confusion, not a mere possibility, affecting numerous ordinary prudent

purchasers.” (quotations and citation omitted)); Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d

739, 743 (2d Cir. 1998) (“To support a finding of infringement, a probability of confusion, not a

mere possibility, must exist.”)

In considering the likelihood of confusion, courts “generally examine the non-exclusive

list of eight factors suggested . . . in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492,

495 (2d Cir. 1961): the strength of the senior user’s mark; the similarity of the parties’ marks; the

proximity of the parties’ areas of commerce; the likelihood that the senior user will bridge the

gap separating their areas of activity; the existence of actual consumer confusion; whether the

junior user acted in bad faith or was otherwise reprehensible in adopting the mark; the quality of

the junior user’s product; and the sophistication of the relevant consumer group.” Guthrie, 826

F.3d at 37. Three (3) additional factors “to be considered when they are pertinent to the facts[,] . .

. [are] ‘the rather sterile nature of plaintiffs’ three-year priority due to their exceedingly limited

sales in this country, their long delay in asserting their claim, and the serious harm an injunction

would cause the defendant as against the trifling benefit to the plaintiffs.’” Id. at 37, n. 3 (quoting

Chandon Champagne Corp. v. San Marino Wine Corp, 335 F.2d 531, 536 (2d Cir. 1964)). “The

pertinence of individual factors varies with the facts of the particular case[,] [and] [c]ourts should

not treat any one factor as dispositive[.]” Id. at 37; see also Starbucks Corp. v. Wolfe’s Borough

Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009) (“The application of the Polaroid test is “not

mechanical, but rather, focuses on the ultimate question of whether, looking at the products in

their totality, consumers are likely to be confused.” (quotations and citation omitted)).

Only the second Polaroid factor, i.e., the similarity of the marks, clearly weighs in favor

of plaintiff. With respect to the first factor, i.e., strength of the mark,

“[t]he term ‘strength’ refers primarily to four categories of gradually increasing

protection accorded to trademarks[:] . . . At the bottom of the ladder is the generic

mark, which is understood as referring to the genus of which the particular product

is a species. . . . On the next rung up the ladder of strength is descriptive marks[,] .

. . [which] command weak protection. The next rung up the ladder is for suggestive

marks—those that communicate something about the product to which they relate,

but by suggestion rather than description. These are accorded somewhat stronger

protection. Finally, the strongest protection goes to marks that are arbitrary or

fanciful—marks that have no logical relationship to the product or service for which

they were used.”

Guthrie, 826 F.3d at 41 (quotations, alterations, emphasis and citations omitted). Plaintiff’s

mark, consisting of a personal name and a generic word, with no particular style, is a descriptive

mark, see Yarmuth-Dion, Inc. v. D’ion Furs, Inc., 835 F.2d 990, 993 (2d Cir. 1987) (holding that

“a personal name[] is a descriptive mark”); see also Brennan’s, Inc. v. Brennan’s Rest., LLC, 360

F.3d 125, 131 (2d Cir. 2004); Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 217 (2d

Cir. 2003), abrogated in part on other grounds by 4 Pillar Dynasty LLC v. New York & Co., Inc.,

933 F.3d 202, 215-16 (2d Cir. 2019), “and as such is generally weak unless there is evidence of

secondary meaning.”10 Patsy’s Brand, 317 F.3d at 217; see also Cross Commerce Media, Inc. v.

Collective, Inc., 841 F.3d 155, 160 n. 3 (2d Cir. 2016) (“Courts may view evidence concerning

the origin-indicating significance of a mark in the marketplace as relevant to and probative of the

strength of a mark and hence useful in assessing the likelihood of confusion.” (quotations and

citation omitted)); 815 Tonawanda St. Corp. v. Fay’s Drug Co., Inc., 842 F.2d 643, 648 (2d Cir.

1988) (“For the purpose of trademark analysis, personal names—both surnames and first

names—are generally regarded as descriptive terms which require proof of secondary

10 “[A]lthough a registered mark is presumptively distinctive,” Brown v. Quiniou, 744 F. Supp. 463, 469

(S.D.N.Y.,1990); see also Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir. 1976) (“[T]he

decision of the Patent Office to register a mark without requiring proof of secondary meaning affords a rebuttable

presumption that the mark is suggestive or arbitrary or fanciful rather than merely descriptive”), “it does not

inevitably follow that the mark is strong.” Brown, 744 F. Supp. at 469; see also Nikon, Inc. v. Ikon, Corp., No. 89-

cv-6044, 1992 WL 114509, at * 2 (S.D.N.Y. May 1, 1992) (“[R]egistration of a mark does not necessarily mean that

a mark is strong.”)

meaning.”); Paco Sport, Ltd. v. Paco Rabanne Perfumes, 234 F.3d 1262, 2000 WL 1721126, at *

3 (2d Cir. Nov. 16, 2000) (unpublished opinion) (“Personal names are descriptive terms and,

therefore, inherently weak.”)

“A mark or trade name has acquired secondary meaning if a purchaser will associate it

with a certain producer, and will be likely to make that same association when an identical mark

(or a confusingly similar mark), is used on another producer’s product.” Yarmuth-Dion, 835 F.2d

at 993 (quotations and citation omitted). “The existence of secondary meaning is an inherently

factual inquiry in which . . . [courts] examine[]: (1) the senior user’s advertising expenditures, (2)

consumer studies linking the name to the source, (3) sales success, (4) unsolicited media

coverage of the product, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the

mark’s use.” Yarmuth-Dion, 835 F.2d at 993; see also Fay’s Drug, 842 F.2d at 648 (“Proof of

secondary meaning entails vigorous evidentiary requirements. . . . Some of the factors this court

has examined in determining whether a mark had secondary meaning include advertising

expenditures, consumer surveys, media coverage, attempts to copy the mark, and length and

exclusivity of use.” (quotations, alterations and citations omitted)).

Plaintiff’s evidence with respect to secondary meaning consists largely of his own

assertions regarding the “high quality standards [he] maintain[s] at [his] ‘Addy’s Barbeque’

restaurants in Teaneck and Astoria” and his “good reputation as Chef Addy,” (Khan Decl., ¶ 26),

which allegedly is “directly associated with [his] goodwill and business success.” (Id.). However,

“[s]uch ‘opinion’ testimony by a proprietor is considered self-serving and of little probative

value.” Fay’s Drug, 842 F.2d at 648. Plaintiff does not proffer, inter alia, any consumer studies

or surveys; affidavits from any of his customers; amounts of his sales or advertising expenditures

at the Teaneck and/or Astoria restaurants; or proof of any unsolicited media coverage of his

restaurants. Although plaintiff may have enjoyed exclusive use of the “Addy’s Barbeque” mark

in the tri-state area for almost three (3) years before he and defendants opened the Elmont

restaurant, “in the absence of other persuasive evidence demonstrating that consumers associate

[‘Addy’s Barbeque’] with the plaintiff . . . [he] failed to meet [his] burden of proving secondary

meaning.” Fay’s Drug, 842 F.2d at 648. Accordingly, plaintiff’s mark “commands weak

protection,” Guthrie, 826 F.3d at 41, and, thus, the first factor weighs in favor of defendants.

“The proximity factor can apply to both the subject matter of the commerce in which the

two parties engage and the geographic areas in which they operate[,]” Guthrie, 826 F.3d at 39,

and “[i]ts pertinence depends on the logical proposition that the public is less likely to draw an

inference of relatedness from similar marks when the marks’ users are in dissimilar areas of

commerce, or, depending on circumstances, are involved in localized commerce in geographic

areas widely distant from one another.” Id. Although the parties engage in the same area of

commerce, i.e., the operation of a restaurant serving halal food, they operate in distinct

geographic services areas sufficiently distant from one another such that consumers are unlikely

to be confused by defendants continued use of the name “Addy’s BBQ” in connection with its

operation of the Elmont restaurant.11

Similarly, the buyer sophistication factor has little to no bearing on the likelihood of

confusion under the circumstances of this case. See generally Cadbury Beverages, Inc. v. Cott

Corp., 73 F.3d 474, 480 (2d Cir. 1996) (“The eighth Polaroid factor, ‘sophistication of the

buyers,” has been called ‘analogous’ to the proximity factor.”); E.A. Sween Co., Inc. v. Big City

11 According to Google maps, https://www.google.com/maps/dir/ (last visited 10/22/2019), the Teaneck restaurant

was approximately twenty-five (25) miles from the Elmont restaurant; and the Astoria restaurant is approximately

eighteen (18) miles from the Elmont restaurant, and across almost the entire borough of Queens, i.e., the Astoria

restaurant is located in western Queens near the Robert F. Kennedy Bridge, f/k/a the Triborough Bridge, which

connects Queens, Manhattan and the Bronx, whereas the Elmont restaurant is located in western Nassau County,

near the eastern border of Queens. Plaintiff presents no persuasive evidence of any overlap in the geographic reach

or customer base of his restaurants and the Elmont restaurant.

Deli Express Corp., No. 14-cv-6031, 2016 WL 5874998, at * 5 (E.D.N.Y. Oct. 8, 2016) (“The

proximity factor is . . . generally considered alongside the factor regarding sophistication of the

buyers.”); 27-24 Tavern Corp. v. Dutch Kills Centraal, No. 14-cv-1625, 2015 WL 5772158, at *

14 (E.D.N.Y. Sept. 29, 2015) (considering the proximity and buyer sophistication factors “in

tandem”).

“The factor that focuses on the ‘likelihood that the prior owner will bridge the gap,’ . . .

becomes pertinent primarily when the junior user makes a credible case that there is little or no

likelihood of consumer confusion because the senior user operates in a different field of

enterprise or a different geographic area.” Guthrie, 826 F.3d at 45 (quoting Polaroid, 287 F.2d at

495). “In such circumstances, the senior user can undercut the force of the junior user’s argument

by showing a likelihood that it will expand geographically or into other areas of commerce so

that the likelihood of confusion will increase.” Id.; see also Hormel Foods Corp. v. Jim Henson

Prods., Inc., 73 F.3d 497, 504 (2d Cir. 1996) (“Bridging the gap refers to the senior user’s

interest in preserving avenues of expansion and entering into related fields.” (quotations and

citation omitted)); Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 963 (2d Cir. 1996)

(holding that the “bridging the gap” factor “looks to either the likelihood that [the senior user]

will enter [the junior user’s] business or the average customer’s perception of the likelihood that

the [senior user] would enter the [junior user’s] market.”) Other than the conclusory and self-

serving statements in plaintiff’s declaration, nothing in the record suggests that he ever had any

intention of expanding his business to create a chain of restaurants; or that the public believed he

was likely to do so. See, e.g. Lebewohl v. Heart Attack Grill LLC, 890 F. Supp. 2d 278, 295

(S.D.N.Y. 2012) (“A speculative intention is insufficient to demonstrate that bridging the gap is

likely; a litigant should provide evidence of a concrete expansion plan.”) “[T]he intent of the

[senior] user to expand or its activities in preparation to do so, unless known by prospective

purchasers, does not affect the likelihood of confusion.” Lang v. Retirement Living Publ’n Co.,

Inc., 949 F.2d 576, 582 (2d Cir. 1991) (emphasis in original) (quotations and citation omitted).

Indeed, in his memorandum of law in support of his motion for injunctive relief, plaintiff does

not assert any intent to expand his restaurant business geographically.

Likewise, plaintiff has not established that “relative quality as between a senior user’s

and a junior user’s [product or services],” Guthrie, 829 F.3d at 44, should play any role in the

Court’s determination of likelihood of confusion under the circumstances of this case. Plaintiff

has not submitted any persuasive evidence indicating that defendants’ products and services are

inferior to those provided at either the Teaneck or Astoria restaurants; nor that plaintiff’s

reputation could be jeopardized by the quality of defendants’ products and services at the Elmont

restaurant. See Sports Auth., 89 F.3d at 965 (holding that the “relative quality” factor “is

primarily concerned with whether the senior user’s reputation could be jeopardized by virtue of

the fact that the junior user’s product is of inferior quality.” (quotations and citation omitted)).

Indeed, both of plaintiffs’ restaurants, like the Elmont restaurant, had positive and negative

customer reviews; and the Elmont restaurant had a higher rating than both of plaintiff’s

restaurants on at least one (1) website. (See, Cheema Decl., Ex. E).

Moreover, as set forth above, there is no persuasive evidence of actual consumer

confusion resulting from defendants continued use of the name “Addy’s BBQ” in their operation

of the Elmont restaurant; nor of any bad faith or reprehensible conduct on defendants’ part in

continuing to use that name in their operation of the Elmont restaurant. Indeed, defendants

present evidence indicating that plaintiff led them to believe that there was no impediment to

their continued use of the name “Addy’s BBQ” in their operation of the Elmont restaurant after

he left the partnership, (see Cheema Decl., Ex. C; and Umar Decl., ¶ 4), at least until his

attorneys sent them the cease and desist letter in February 2019 approximately seven (7) months

thereafter. Accordingly, plaintiff has not demonstrated a likelihood of confusion and, thus, has

not established a likelihood of success on the merits, much less a clear or substantial likelihood

of success on the merits, of his trademark infringement claims against defendants.13

b. Cybersquatting Claim

The ACPA provides, in relevant part, that “[a] person shall be liable in a civil action by

the owner of a mark, including a personal name which is protected as a mark under this section,

if, without regard to the goods or services of the parties, that person--(i) has a bad faith intent to

profit from that mark, including a personal name which is protected as a mark under this section;

and (ii) registers, traffics in, or uses a domain name that-- (I) in the case of a mark that is

distinctive at the time of registration of the domain name, is identical or confusingly similar to

that mark; [or] (II) in the case of a famous mark that is famous at the time of registration of the

domain name, is identical or confusingly similar to or dilutive of that mark. . . .” 15 U.S.C. §

1125(d)(1)(A).

The ACPA was enacted “to protect consumers and holders of distinctive trademarks from

‘cybersquatting,’ which ‘involves the registration as domain names of well-known trademarks by

13 Since plaintiff has not demonstrated a likelihood of confusion, nor any bad faith on the part of defendants, he also

failed to demonstrate a likelihood of success on the merits of his unfair competition claims under the New York

common law. See generally Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 34-35 (2d Cir. 1995)

(“The essence of unfair competition under New York common law is the bad faith misappropriation of the labors

and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods. . . . In a

common law unfair competition claim under New York law, the plaintiff must show either actual confusion in an

action for damages or a likelihood of confusion for equitable relief. . . . Additionally, there must be some showing of

bad faith.” (quotations, alterations and citations omitted)); see also Universal Instruments Corp. v. Micro Sys. Eng’g,

Inc., 924 F.3d 32, 50-51 (2d Cir. 2019) (“The essence of an unfair competition claim under New York law is that

the defendant has misappropriated the labors and expenditures of another with some element of bad faith.”)

non-trademark holders who then try to sell the names back to the trademark owners.” Webadviso

v. Bank of Am. Corp., 448 F. App’x 95, 97 (2d Cir. Oct. 26, 2011) (summary order) (quoting

Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 493 (2d Cir. 2000)). “To

successfully assert a claim under the ACPA, a plaintiff must demonstrate that (1) its marks were

distinctive at the time the domain name was registered; (2) the infringing domain names

complained of are identical to or confusingly similar to plaintiff’s mark; and (3) the infringer has

a bad faith intent to profit from that mark.” Webadviso, 448 F. App’x at 97. For purposes of this

motion, only the “bad faith intent to profit” element is at issue.

“A ‘bad faith intent to profit’ is a term of art in the [ACPA] and cannot be equated with

‘bad faith’ in other contexts (such as trademark infringement).” Flat Rate Movers, Ltd. v.

FlatRate Moving & Storage, Inc., 104 F. Supp. 3d 371, 382 (S.D.N.Y. 2015) (citing Sporty’s

Farm, 202 F.3d at 499 n. 13); accord NYP Holdings v. New York Post Publ’g, Inc., 63 F. Supp.

3d 328, 339 (S.D.N.Y. 2014). “A plaintiff must show that the defendant’s use of the domain

name is an attempt to profit specifically from ‘squatting’ on the domain name with bad faith,

rather than simply [] another aspect of the alleged trademark infringement.” Flat Rate Movers,

104 F. Supp. 3d at 382 (quotations, alterations and citation omitted); see also Gioconda Law

Grp. PLLC v. Kenzie, 941 F. Supp. 2d 424, 437 (S.D.N.Y. 2013) (“The requirement of bad faith

intent to profit imposes an important limit that cabins the statute’s scope and ensures that the

ACPA targets only the specific evils that Congress sought to prevent.”)

“With respect to the ‘bad faith’ element, the ACPA lists nine [9] non-exclusive factors

for courts to consider in determining whether a domain name registrant has acted in bad faith[,]”

Webadviso, 448 F. App’x at 97 (citing 15 U.S.C. § 1125(d)(1)(B)(i)); see also Sporty’s Farm,

202 F.3d at 498, and “also sets forth a ‘bad-faith safe harbor’ provision[,]” Webadviso, 448 F.

App’x at 97, n. 2, which provides that “[b]ad faith intent described under subparagraph (A) [of

15 U.S.C. § 1125(d)(1)(a)] shall not be found in any case in which the court determines that the

person believed and had reasonable grounds to believe that the use of the domain name was a

fair use or otherwise lawful.” 15 U.S.C. § 1125(d)(1)(B)(ii) (emphasis added). “[A] court must

analyze each case based on its unique circumstances to determine how close a defendant’s

conduct falls to the ACPA’s heartland[,]” New World Sols., Inc. v. NameMedia Inc., 150 F.

Supp. 3d 287, 325 (S.D.N.Y. 2015), examples of which include situations “where a defendant

registers an established entity’s domain name in bad faith and offers to sell it to the entity for an

exorbitant price[,] . . . [or] where a defendant intends to profit by diverting customers from the

website of the trademark owner to the defendant’s own website, where those customers would

purchase the defendant’s products or services.” Id. (quotations and citations omitted); see also

Kaplan, Inc. v. Yun, 16 F. Supp. 3d 341, 351 (S.D.N.Y. 2014) (dismissing the plaintiff’s

cybersquatting claim where the allegations in the complaint did not “suggest that defendants

perpetrated the core activities that threaten to result in the paradigmatic harm that the ACPA was

enacted to eradicate, that is, the proliferation of cybersquatting– the Internet version of a land

grab.” (quotations and citation omitted)); Gioconda, 941 F. Supp. 2d at 437 (“The ACPA is

designed principally for cases where a defendant either forces a markholder to purchase a

domain name at an extortionate price or diverts customers from the markholder’s website to the

defendant’s own website.”)

Plaintiff has not established a likelihood of success on his claim that defendants ever had

any bad faith intent to profit from any goodwill associated with plaintiff’s mark by registering

and using the domain name at issue. Indeed, plaintiff asserts only that defendants “have acted in

bad faith to compete unlawfully and unfairly against [him], infringing his mark and trading on

his goodwill and business reputation[,]” (Plf. Mem. at 12); he does not assert that defendants had

a bad faith intent to profit within the meaning of the ACPA. Moreover, given that the Elmont

restaurant has been doing business as “Addy’s BBQ” since it opened in January 2018; and the

evidence demonstrating that plaintiff initially consented to defendants’ use of the name “Addy’s

BBQ,” both before and after he left the partnership, and did not object to defendants’ continued

use of the name for a period of approximately seven (7) months after he left the partnership,

defendants had at least reasonable grounds to believe that the registration and use of the domain

name at issue was lawful. Accordingly, plaintiff has not established a likelihood of success on

the merits, much less a clear or substantial likelihood of success on the merits, of his

cybersquatting claim under the ACPA.

c. Trademark Dilution Claim under N.Y. Gen. Bus. Law § 360-l12

“New York law provides that a ‘[l]ikelihood of injury to business reputation or of dilution

of the distinctive quality of a mark or trade name shall be a ground for injunctive relief ...

notwithstanding the absence of competition between the parties or the absence of confusion as to

the source of goods or services.’” Starbucks, 588 F.3d at 113-14 (alterations in original) (quoting

N.Y. Gen. Bus. Law § 360–l); accord E.A. Sween Co., Inc. v. A&M Deli Express Inc., --- F.

App’x ---, 2019 WL 4744696, at * 4 (2d Cir. Sept. 30, 2019) (summary order). “Dilution is

grounded on the idea that a trademark can lose its ability [] to clearly and unmistakably

distinguish one source through unauthorized use. . . . It is a gradual whittling away of a firm’s

12 Plaintiff does not seek a TRO or preliminary injunctive relief based upon the likelihood of success on his

trademark dilution claim under the FTDA.

distinctive trade-mark or name.”13 Hormel, 73 F.3d at 506 (quotations, alterations and citations

omitted). “In order to establish a dilution claim, two elements must be shown: (1) ownership of a

distinctive mark, and (2) a likelihood of dilution.” Hormel, 73 F.3d at 506; see also Louis Vuitton

Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 119 (2d Cir. 2006) (distinguishing the federal

dilution standard, which “requires a showing of actual dilution” from the New York standard,

which only “requires a showing of a mere likelihood of dilution.” (quotations and citations

omitted)).

Section 360-l of the New York General Business Law “provides for protection against

both dilution by blurring and tarnishment[,] . . . [and] does not require a mark to be ‘famous’ for

protection against dilution to apply.” Starbucks, 568 F.3d at 114; see also NYSE, 293 F.3d at 557

(“Dilution under New York law can involve either blurring or tarnishment.”) However, “New

York law does not permit a dilution claim unless the marks are ‘substantially’ similar.”

Starbucks, 588 F.3d at 114; see also A&M Deli, --- F. App’x ---, 2019 WL 4744696, at * 4 (“In

contrast to a dilution claim under the Lanham Act, a state law dilution claim does not require that

a mark be famous to be protected, but does require that the marks be substantially similar.”

(quotations and citation omitted)). Plaintiff asserts both a dilution by blurring and a dilution by

tarnishment claim.

“Blurring occurs ‘where the defendant uses or modifies the plaintiff’s trademark to

identify the defendant’s goods and services, raising the possibility that the mark will lose its

ability to serve as a unique identifier of the plaintiff’s product.’” NYSE, 293 F.3d at 558 (quoting

Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994)). “To determine the likelihood

of blurring, [the Second Circuit] . . . look[s] to six factors, including: (i) the similarity of the

13 Hormel involved N.Y. Gen. Bus. Law § 368-d, the predecessor to N.Y. Gen. Bus. Law § 360-l. See New York

Stock Exch., Inc. v. New York, N.Y. Hotel LLC (“NYSE”), 293 F.3d 550, 557 (2d Cir. 2002).

marks; (ii) the similarity of the products covered; (iii) the sophistication of the consumers; (iv)

the existence of predatory intent; (v) the renown of the senior mark; and (vi) the renown of the

junior mark.” NYSE, 293 F.3d at 558; accord A&M Deli, --- F. App’x ---, 2019 WL 4744696, at

* 4; see also Lapine v. Seinfeld, 375 F. App’x 81, 85 (2d Cir. Apr. 28, 2010) (summary order)

(“To determine the likelihood of dilution by blurring, courts consider six factors similar to the

Polaroid factors, . . . and assess the similarity of the marks in a similar fashion as under federal

trademark law[.]” (quotations and citations omitted)). Although the first two (2) factors weigh in

favor of plaintiff, the remaining four (4) do not. Due to, inter alia, the distinct geographic service

areas of plaintiff’s restaurants and defendants’ Elmont restaurant, as set forth above, the elements

of the sophistication of consumers and the renown of plaintiff’s and defendants’ marks weigh in

favor of defendants, i.e., there is little possibility plaintiff’s mark “will lose its ability to serve as

a unique identifier” of plaintiff’s restaurant services, Deere, 41 F.3d at 43, by defendants’ use of

a similar mark in the operation of the Elmont restaurant; and the record is bereft of any

persuasive evidence of predatory intent on the part of defendants. Accordingly, plaintiff has not

established a likelihood of success, much less a clear or substantial likelihood of success, on the

merits of his state law dilution by blurring claim.

“Tarnishment occurs where a trademark is ‘linked to products of shoddy quality, or is

portrayed in an unwholesome or unsavory context,’ with the result that ‘the public will associate

the lack of quality or lack of prestige in the defendant’s goods with the plaintiff’s unrelated

goods.’” NYSE, 293 F.3d at 558 (quoting Deere, 41 F.3d at 43); accord Hormel, 73 F.3d at 507.

“The sine qua non of tarnishment is a finding that plaintiff’s mark will suffer negative

associations through defendant’s use.” Hormel, 73 F.3d at 507. Since, inter alia, plaintiff has not

demonstrated the inferior quality or “lack of prestige” in defendants’ products or services, he has

not established a likelihood of success, much less a clear or substantial likelihood of success, on

the merits of his state law dilution by tarnishment claim.

3. Irreparable Injury

“Irreparable harm is defined as certain and imminent harm for which a monetary award

does not adequately compensate[,] . . . [and] exists where, but for the grant of equitable relief,

there is a substantial chance that upon final resolution of the action the parties cannot be returned

to the positions they previously occupied.” Allstate Ins. Co. v. Harvey Family Chiropractic, 677

F. App’x 716, 718 (2d Cir. Jan. 27, 2017) (summary order) (quotations and citations omitted);

see also WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 285 (2d Cir. 2012) (holding that irreparable harm

is “harm to the plaintiff’s legal interests that could not be remedied after a final adjudication.”)

“Harm may be irreparable where the loss is difficult to replace or measure, or where plaintiffs

should not be expected to suffer the loss.” WPIX, 691 F.3d at 285. Thus, unless the movant

demonstrates “an injury that is neither remote nor speculative, but actual and imminent and that

cannot be remedied by an award of monetary damages[,] . . . a motion for a preliminary

injunction should be denied.” Rodriguez ex rel. Rodriguez v. DeBuono, 175 F.3d 227, 234 (2d

Cir. 1999) (quotations and citations omitted); see also eBay Inc. v. MercExchange, L.L.C., 547

U.S. 388, 391, 126 S. Ct. 1837, 164 L. Ed. 2d 641 (2006) (holding that before a court may grant

injunctive relief, the plaintiff must demonstrate, inter alia, “that remedies available at law, such

as monetary damages, are inadequate to compensate for [its] injury.”); Faiveley Transp. Malmo

AB v. Wabtec Corp., 559 F.3d 110, 118 (2d Cir. 2009) (“[T]o satisfy the irreparable harm

requirement, plaintiffs must demonstrate that absent a preliminary injunction they will suffer an

injury that is neither remote nor speculative, but actual and imminent, and one that cannot be

remedied if a court waits until the end of trial to resolve the harm. . . . Where there is an adequate

remedy at law, such as an award of money damages, injunctions are unavailable except in

extraordinary circumstances.” (quotations, alterations and citations omitted)).

Following the Supreme Court’s decision in eBay, the Second Circuit has held that in

considering whether the plaintiff sufficiently demonstrated a likelihood of irreparable harm, “the

court must not adopt a ‘categorical’ or ‘general’ rule or presume that the plaintiff will suffer

irreparable harm (unless such a ‘departure from the long tradition of equity practice’ was

intended by Congress).”14 Salinger v. Colting, 607 F.3d 68, 80 (2d Cir. 2010) (emphasis added)

(quoting eBay, 547 U.S. at 391, 393-94, 126 S. Ct. 1837). “Instead, the court must actually

consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but

ultimately prevails on the merits, paying particular attention to whether the ‘remedies available at

law, such as monetary damages, are inadequate to compensate for that injury.’” Id. (quoting

eBay, 547 U.S. at 391, 126 S. Ct. 1837); accord WPIX, 691 F.3d at 285. In other words, “[a]fter

eBay, . . . courts must not simply presume irreparable harm. . . . Rather, plaintiffs must show that,

on the facts of their case, the failure to issue an injunction would actually cause [a likelihood of]

irreparable harm.” Salinger, 607 F.3d at 82; see also Silberstein v. Aetna, Inc., No. 13-cv-8759,

2014 WL 1388790, at *3 (S.D.N.Y. Apr. 9, 2014) (“[U]nder eBay and Salinger, Plaintiff cannot

rely on a presumption of irreparable harm flowing from the violations that he alleges-he must

make a separate showing of irreparable harm. Pre-eBay cases suggesting the contrary are not

good law.”); Fresh Del Monte Produce Inc. v. Del Monte Foods Co., 933 F. Supp. 2d 655, 660

14 Although Salinger involved a Lanham Act copyright case, the Second Circuit found that “eBay strongly indicates

that the traditional principles of equity it employed are the presumptive standard for injunctions in any context.”

Salinger, 607 F.3d at 78. The Court also indicated that although it was “not called upon to extend eBay beyond the

context of copyright cases, [it saw] no reason that eBay would not apply with equal force to an injunction in any

type of case.” Salinger, 607 F.3d at 78, n. 7 (emphasis in original).

(S.D.N.Y. 2013) (“To apply a different test [than eBay] or presumption of entitlement to an

injunction would be a major departure from the long tradition of equity practice that should not

be lightly implied. . . . [The Lanham Act’s] grant of authority to issue injunctive relief contains

no indication that any other standard should be employed and, to the contrary, expressly

incorporates ‘the principles of equity.’ 15 U.S.C. § 1116(a).” (quotations, alterations and

citations omitted)).

Plaintiff has not demonstrated that he would likely suffer irreparable harm in the absence

of a preliminary injunction. The specific harm alleged by plaintiff from defendants continued use

of the mark “Addy’s BBQ” in their operation of the Elmont restaurant is: (i) the harm to his

business reputation and goodwill from the loss of control over his trademark, which he alleges

“continually threaten[s]” the viability of his restaurant business, (Plaintiff’s Memorandum of

Law in Support of Motion for TRO [“Plf. Mem.”] at 16-19); and (ii) the harm “to his intellectual

property rights and his ownership over the ‘Addy’s Barbeque’ mark and brand.” (Id. at 18).

However, plaintiff’s conclusory and unsupported assertions, inter alia, of harm to his

goodwill and reputation; the quality of defendants’ products and services at the Elmont

restaurant vis-à-vis those offered at plaintiff’s restaurant15; the threat to the viability of his

business; and the impossibility of calculating the number of customers he “will lose,” (Plf. Mem.

at 18), without more, are insufficient to satisfy his burden of showing that irreparable harm

would be likely in the absence of a preliminary injunction. See, e.g. Rush v. Hillside Buffalo,

LLC, 314 F. Supp. 3d 477, 486 (W.D.N.Y. 2018) (“In failing to supply evidence of the loss of

reputation or good will beyond his own conclusory averments, Plaintiff has not made a sufficient

showing that irreparable harm is likely. . . .”); CSI Entm’t, Inc. v. Anthem Media Grp., Inc., No.

15 Since the Teaneck restaurant is now closed, the Court construes plaintiff’s allegations of harm to his restaurants

and business as referring only to the Astoria restaurant.

15-cv-3508, 2016 WL 11263667, at * 7-8 (E.D.N.Y. Dec. 30, 2016), report and recommendation

adopted, 2017 WL 2778466 (E.D.N.Y. June 27, 2017) (finding that the plaintiff’s conclusory

statements of loss of reputation were insufficient to show irreparable harm); Alzheimer’s Found.

of Am., Inc. v. Alzheimer’s Disease & Related Disorders Ass’n, Inc., No. 10-cv-3314, 2015 WL

4033019, at * 11 (S.D.N.Y. June 29, 2015) (“[C]onclusory statements of loss of reputation will

not justify an irreparable harm finding.”); Worldwide Diamond Trademarks, Ltd. v. Blue Nile,

Inc., No. 14-cv-3521, 2014 WL 7933941, at * 4-5 (S.D.N.Y. Nov. 6, 2014) (“In general, injury

resulting from the loss of goodwill is irreparable only when the very viability of the plaintiff’s

business, or substantial losses of sales beyond those of the terminated product, have been

threatened.” (quotations and citations omitted)). “[I]ssuing a preliminary injunction based only

on a possibility of irreparable harm is inconsistent with [the Supreme Court’s] characterization of

injunctive relief as an extraordinary remedy that may only be awarded upon a clear showing that

the plaintiff is entitled to such relief.” Winter, 555 U.S. at 22, 129 S. Ct. 365. Since, inter alia,

plaintiff has not demonstrated a likelihood of confusion in consumers’ minds resulting from

defendants continued use of the name “Addy’s BBQ” in connection with their operation of the

Elmont restaurant, plaintiff has not established a likelihood of success on the merits of his claim

that he would lose control over the reputation and goodwill of his mark.

Moreover, although defendants have continued to use the name “Addy’s BBQ” in

connection with the operation of the Elmont restaurant after plaintiff left the partnership in July

2018, plaintiff did not commence this action until April 16, 2019, i.e., approximately nine (9)

months later; and he did not seek injunctive relief until almost four (4) months thereafter, i.e., on

August 12, 2019, further suggesting a lack of irreparable harm. See Levola v. Fischer, 403 F.

App’x 564, 565 (2d Cir. Dec. 14, 2010) (summary order) (affirming the district court’s finding

that the plaintiff failed to demonstrate “that he faced an immediate danger of irreparable harm,”

in light of his delay in seeking injunctive relief); CSI Entm’t, 2016 WL 11263667, at * 5

(“Because an application for a preliminary injunction now requires a movant to make an actual

showing of imminent irreparable injury in the absence of an injunction, delay is an important

factor that the Court must consider.”); e.g. Hornig v. Trustees of Columbia Univ. in City of New

York, No. 17-cv-3602, 2018 WL 5800801, at * 7 (S.D.N.Y. Nov. 5, 2018) (holding that the

plaintiff’s two and a half (2 ½) month delay in seeking injunctive relief undermined a finding of

irreparable injury); Livery Round Table, Inc. v. New York City FHV & Limousine Comm’n, No.

18-cv-2349, 2018 WL 1890520, at * 9 (S.D.N.Y. Apr. 18, 2018) (“A delay of about three months

undercuts a showing of immediate and irreparable injury.”) Accordingly, plaintiff has not

demonstrated a likelihood of imminent irreparable injury absent a preliminary injunction.

4. Balance of Equities

Moreover, “the mere fact of seniority alone does not entitle the first user of a trademark

to injunctive relief. The determination is to be made on the basis of the equities involved, and

thereby requires an evaluation of the legitimate interests of the senior user, the junior user, and

the consuming public.” American Footwear Corp. v. General Footwear Co. Ltd., 609 F.2d 655,

664 (2d Cir. 1979); see, e.g. Patsy’s Italian Rest., Inc. v. Banas, 658 F. 3d 254, 275-76 (2d Cir.

2011). Since “a party requesting a preliminary injunction must generally show reasonable

diligence,” Benisek, --- U.S. ---, 138 S. Ct. at 1944, in considering the balance of equities, an

unreasonable delay in seeking injunctive relief may weigh against the party seeking such relief.

See Id.

Furthermore, the Second Circuit has “long held in the context of trademark actions that

where a person entitled to exclusive use of a trademark is guilty of unreasonable delay in

asserting his rights against an infringer [], or acquiesces in the latter’s use, [] a court of equity has

the discretionary power [] to deny injunctive relief. . . .”16 ProFitness Physical Therapy Ctr. v.

Pro-Fit Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62, 67 (2d Cir. 2002). In

ProFitness, the Second Circuit addressed the equitable doctrines of acquiescence and laches as

follows:

“The closely related doctrines of acquiescence and laches turn on ‘a consideration

of the circumstances of each particular case and a balancing of the interests and

equities of the parties.’ Carl Zeiss [Stiftung v. VEB Carl Zeiss Jena], 433 F.2d [686,]

703 [2d Cir. 1970] (internal quotation marks omitted). Findings of delay and

prejudice are central to both of these defenses. The elements of acquiescence are:

‘(1) the senior user actively represented that it would not assert a right or a claim;

(2) the delay between the active representation and assertion of the right or claim

was not excusable; and (3) the delay caused the defendant undue prejudice.’ Times

Mirror Magazines, Inc. v. Field & Stream Licenses Co., 294 F.3d 383, 395 (2d Cir.

2002) (internal quotation marks omitted). Similarly, to ‘prevail on the affirmative

defense of laches, a defendant must prove that it has been prejudiced by the

plaintiff’s unreasonable delay in bringing the action.’ Conopco, Inc. v. Campbell

Soup Co., 95 F.3d 187, 192 (2d Cir. 1996).

Although ‘both [acquiescence and laches] connote consent by the owner to an

infringing use of his mark, acquiescence implies active consent, while laches

implies a merely passive consent.’ Sara Lee Corp. v. Kayser–Roth Corp., 81 F.3d

455, 460, 462 (4th Cir. 1996); see also Kellogg Co. v. Exxon Corp., 209 F.3d 562,

569 n. 2 (6th Cir. 2000). Active consent is implied by ‘conduct on the plaintiff’s

part that amount[s] to an assurance to the defendant, express or implied, that the

plaintiff would not assert his trademark rights against the defendant.’ Carl Zeiss,

433 F.2d at 704 (internal quotation marks omitted). In the case of laches, ‘courts

construe the plaintiff’s unreasonable delay to imply consent to the defendant’s

conduct.” Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 152 (5th

Cir.1985).”

16 Defendants assert, inter alia, the doctrine of acquiescence both as an affirmative defense in their answer to the

complaint, (see Answer, ¶ 35), and in their opposition to plaintiff’s motion for summary judgment. (See Def. Mem.

at 7-8).

ProFitness, 314 F.3d at 67-68 (fourth brackets in original). “[A] plaintiff communicates active

consent by conduct that amounts to an explicit or implicit assurance that plaintiff, with

knowledge of defendant’s conduct, will not assert its trademark rights.” ProFitness, 314 F.3d at

68; accord Fendi Adele, S.R.L. v. Ashley Reed Trading, Inc., 507 F. App’x 26, 29 (2d Cir. Jan. 4,

2013) (summary order).

The injunctive relief sought would provide little benefit to plaintiff, who, as set forth

above, has not demonstrated any tangible harm, whether financial or reputational, from

defendants continued use of a similar name in their operation of the Elmont restaurant; whereas

defendants would be substantially harmed by enjoining them from continuing to operate the

same business under the same name which they have operated for approximately two (2) years.

Moreover, since, inter alia, plaintiff has not demonstrated a likelihood of confusion, and

defendants presented evidence from which it may reasonably be inferred that plaintiff actively

consented to defendants’ continued use of the name “Addy’s BBQ” in the operation of their

Elmont restaurant for approximately seven (7) months before asserting any right of claim to the

mark, without adequate explanation for such delay, the balance of equities weighs against

granting plaintiff preliminary injunctive relief. See, e.g. Total Control Apparel, Inc. v. DMD Int’l

Imports, LLC, 409 F. Supp. 2d 403, 409-10 (S.D.N.Y. 2006); Mikhlyn v. Bove, No. 08-cv-3367,

2008 WL 4610304, at * 15 (E.D.N.Y. Oct. 15, 2008).

Since, inter alia, plaintiff has neither demonstrated a likelihood of success on the merits

of his claims nor imminent irreparable injury, and granting a preliminary injunction would

effectively afford plaintiff the relief he desires at substantial harm to defendants, the balance of

equities weighs against granting plaintiff injunctive relief at this juncture.17 Accordingly,

17 In light of this determination, it is unnecessary to consider the public interest element for a preliminary injunction.

Cf. Winter, 555 U.S. at 23-24, 129 S. Ct. 365 (declining to address the likelihood of success element for a

plaintiff’s motion pursuant to Rule 65 of the Federal Rules of Civil Procedure for a TRO and

preliminary injunction enjoining and restraining defendants from using the mark “Addy’s BBQ”

and the domain name “addysbbq.com” is denied in its entirety.

B. Defendants’ Cross Motion to Cancel the Registration of Plaintiff’s Mark18

1. Standard of Review

a. Leave to Amend

“Leave to amend should be ‘freely give[n] ... when justice so requires,’ Fed. R. Civ. P.

15(a)(2), but ‘should generally be denied in instances of futility, undue delay, bad faith or

dilatory motive, repeated failure to cure deficiencies by amendments previously allowed, or

undue prejudice to the non-moving party[.]’” United States ex rel. Ladas v. Exelis, Inc., 824 F.3d

16, 28 (2d Cir. 2016) (alterations in original) (quoting Burch v. Pioneer Credit Recovery, Inc.,

551 F.3d 122, 126 (2d Cir. 2008)). “A proposed amendment to a [pleading] is futile when it

could not withstand a motion to dismiss.” F5 Capital v. Pappas, 856 F.3d 61, 89 (2d Cir. 2017),

cert. denied, 138 S. Ct. 473, 199 L. Ed. 2d 358 (2017) (quotations and citation omitted); see, e.g.

Force v. Facebook, Inc., 934 F.3d 53, 62 (2d Cir. 2019) (“Because the district court determined

that it was futile to allow plaintiffs to file a second amended complaint, we evaluate that

preliminary injunction where consideration of the public interest element required denial of the requested injunctive

relief). In any event, since, inter alia, plaintiff has not established a likelihood of consumer confusion, injunctive

relief is not warranted in order to protect the public from “being misled.” Conopco, 95 F.3d at 193 (“[T[he

trademark laws protect [] the public’s interest in not being misled.” (quotations, alterations and citation omitted)).

18 In their answer to the complaint, defendants assert only one (1) counterclaim against plaintiff for breach of

contract. Since defendants did not assert a counterclaim to cancel plaintiff’s registration in their answer to the

complaint, the Court construes their cross motion as seeking both leave to amend their answer to assert

counterclaims to cancel the registration pursuant to Rule 15 of the Federal Rules of Civil Procedure, see generally

Empresa Cubana del Tabaco v. Culbro Corp., 541 F.3d 476, 478-79 (2d Cir. 2008) (holding that a request for relief

pursuant to 15 U.S.C. § 1119 “ordinarily is made as a counterclaim in an infringement action”); Abercrombie, 537

F.2d at 13 (“[Section] 37 of the Lanham Act permits cancellation on a counterclaim by a defendant who does not

own a registered mark”), and summary judgment on such counterclaims pursuant to Rule 56 of the Federal Rules of

Civil Procedure.

proposed complaint as we would a motion to dismiss, determining whether it contains enough

facts to state a claim to relief that is plausible on its face.” (quotations, alterations and citation

omitted)).

The standard of review on a motion made pursuant to Rule 12(b)(6) of the Federal Rules

of Civil Procedure is that a party plead sufficient facts “to state a claim to relief that is plausible

on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929

(2007). “A claim has facial plausibility when the plaintiff pleads factual content that allows the

court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”

Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009). The plausibility

standard requires “more than a sheer possibility that a defendant has acted unlawfully.” Id.

“[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of

misconduct, the complaint has alleged-- but it has not ‘show[n]’-- ‘that the pleader is entitled to

relief.’” Id. at 679, 129 S. Ct. 1937 (brackets in original) (quoting Fed. R. Civ. P. 8(a)(2)).

“Determining whether a [pleading] states a plausible claim for relief will[] . . . be a context-

specific task that requires the reviewing court to draw on its judicial experience and common

sense.” Id.

b. Summary Judgment

“Summary judgment is proper ‘if the movant shows that there is no genuine dispute as to

any material fact and the movant is entitled to judgment as a matter of law.’” ING Bank N.V. v.

M/V TEMARA, IMO No. 9333929, 892 F.3d 511, 518 (2d Cir. 2018) (quoting Fed. R. Civ. P.

56(a)); accord Jaffer v. Hirji, 887 F.3d 111, 114 (2d Cir. 2018). In ruling on a summary

judgment motion, the district court must first “determine whether there is a genuine dispute as to

a material fact, raising an issue for trial.” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184,

202 (2d Cir. 2007) (internal quotations and citations omitted); see also Ricci v. DeStefano, 557

U.S. 557, 129 S. Ct. 2658, 2677, 174 L. Ed. 2d 490 (2009) (“On a motion for summary

judgment, facts must be viewed in the light most favorable to the nonmoving party only if there

is a ‘genuine’ dispute as to those facts.” (emphasis added) (internal quotations and citation

omitted). “A fact is material if it ‘might affect the outcome of the suit under the governing

law[.]’” Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18, 25 (2d Cir. 2015) (quoting Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986)).

In reviewing the record to determine whether there is a genuine issue for trial, the court

must “construe the evidence in the light most favorable to the non-moving party,” Centro de la

Comunidad Hispana de Locust Valley v. Town of Oyster Bay, 868 F.3d 104, 109 (2d Cir. 2017)

(quotations, alterations and citation omitted), and “resolve all ambiguities, and credit all factual

inferences that could rationally be drawn, in favor of the party opposing summary judgment.”

Davis-Garett v. Urban Outfitters, Inc., 921 F.3d 30, 45 (2d Cir. 2019) (quotations and citation

omitted); see also Hancock v. County of Rensselaer, 882 F.3d 58, 64 (2d Cir. 2018) (“In

determining whether there is a genuine dispute as to a material fact, we must resolve all

ambiguities and draw all inferences against the moving party.”) “A genuine issue of material fact

exists if ‘the evidence is such that a reasonable jury could return a verdict for the nonmoving

party.’” Pollard v. New York Methodist Hosp., 861 F.3d 374, 378 (2d Cir. 2017) (quoting

Anderson, 477 U.S. at 248, 106 S. Ct. 2505); accord Nick’s Garage, Inc. v. Progressive Cas. Ins.

Co., 875 F.3d 107, 113-14 (2d Cir. 2017). “Where the record taken as a whole could not lead a

rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Ricci,

557 U.S. at 586, 129 S. Ct. at 2677 (quoting Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio

Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986)); accord Baez v. JetBlue

Airways Corp., 793 F.3d 269, 274 (2d Cir. 2015).

“The moving party bears the initial burden of showing that there is no genuine dispute as

to a material fact.” CILP Assocs., L.P. v. PriceWaterhouse Coopers LLP, 735 F.3d 114, 123 (2d

Cir. 2013) (quotations, brackets and citation omitted); accord Jaffer, 887 F.3d at 114. “[W]hen

the moving party has carried its burden[,] . . . its opponent must do more than simply show that

there is some metaphysical doubt as to the material facts . . . [,]” Scott v. Harris, 550 U.S. 372,

380, 127 S. Ct. 1769, 167 L. Ed. 2d 686 (2007) (quoting Matsushita Elec., 475 U.S. at 586-87,

106 S. Ct. 1348), and must offer “some hard evidence showing that its version of the events is

not wholly fanciful[.]” Miner v. Clinton County, N.Y., 541 F.3d 464, 471 (2d Cir. 2008)

(quotations and citation omitted). The nonmoving party can only defeat summary judgment “by

adduc[ing] evidence on which the jury could reasonably find for that party.” Lyons v. Lancer Ins.

Co., 681 F.3d 50, 56 (2d Cir. 2012) (quotations, brackets and citation omitted). “‘The mere

existence of a scintilla of evidence in support of the [non-movant’s] position will be insufficient’

to defeat a summary judgment motion[,]” Fabrikant v. French, 691 F.3d 193, 205 (2d Cir. 2012)

(quoting Anderson, 477 U.S. at 252, 106 S. Ct. 2505); and “[a] court cannot credit a plaintiff=s

merely speculative or conclusory assertions.” DiStiso v. Cook, 691 F.3d 226, 230 (2d Cir. 2012);

see also Federal Trade Comm’n v. Moses, 913 F.3d 297, 305 (2d Cir. 2019) (“[A] party may not

rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for

summary judgment.”); Flores v. United States, 885 F.3d 119, 122 (2d Cir. 2018) (“While we are

required to resolve all ambiguities and draw all permissible factual inferences in favor of the

non-moving party, . . . conclusory statements, conjecture, or speculation by the party resisting the

motion will not defeat summary judgment[.]” (quotations, alterations and citations omitted)).

Since “there is no issue for trial unless there is sufficient evidence favoring the nonmoving party

for a jury to return a verdict for that party[,] . . . [i]f the evidence is merely colorable, . . . or is not

significantly probative, . . . summary judgment may be granted.” Anderson, 477 U.S. at 249-50,

106 S. Ct. 2505 (quotations and citations omitted).

2. Proposed Claims to Cancel Plaintiff’s Registration

Defendants seek to cancel the registration of plaintiff’s mark pursuant to Section 37 of

the Lanham Act, which provides:

“In any action involving a registered mark the court may determine the right to

registration, order the cancelation of registrations, in whole or in part, restore

canceled registrations, and otherwise rectify the register with respect to the

registrations of any party to the action. Decrees and orders shall be certified by the

court to the Director, who shall make appropriate entry upon the records of the

Patent and Trademark Office, and shall be controlled thereby.”

15 U.S.C. § 1119. “[A] federal court may cancel the registration of a federally registered

trademark if the challenger has standing and there is a valid ground for cancellation.” Brookfield

Office Props. Inc. v. Hotel, No. 16-cv-1854, 2016 WL 6906713, at *3 (S.D.N.Y. Nov. 18, 2016);

accord NameMedia, 150 F. Supp. 3d at 333. The decision whether to grant relief under Section

37 of the Lanham Act “is committed to the discretion of the district court.” Empresa Cubana,

541 F.3d at 478; see also Abercrombie, 537 F.2d at 13 (“Section 37 of the Lanham Act, 15

U.S.C. § 1119, provides authority for the court to cancel those registrations of any party to an

action involving a registered mark.”)

Section 14 of the Lanham Act lists the grounds for cancellation of a trademark, see 15

U.S.C. § 1064, including, inter alia, that the trademark has “become[] the generic name for the

goods or services, or a portion thereof, for which it is registered[;]” or that “its registration was

obtained fraudulently.” Id., § 1064(3).

Defendants first seek cancellation of plaintiff’s registration on the basis that the mark is

merely generic. “A generic term is one that refers, or has come to be understood as referring, to

the genus of which the particular product is a species.” Abercrombie, 537 F.2d at 9; see also

Courtenay Commc’ns Corp. v. Hall, 334 F.3d 210, 214 n. 2 (2d Cir. 2003) (“Essentially, a mark

is generic if, in the mind of the purchasing public it does not distinguish products on the basis of

source but rather refers to the type of product.”) “Generic marks, consisting of words that

identify the type or species of goods or services to which they apply, are totally lacking in

distinctive quality; they are not entitled to any protection against infringement, even if they have

become famous as marks, because according such protection would deprive competitors of the

right to refer to their goods by name.” TCPIP Holding Co., Inc. v. Haar Commc’ns, Inc., 244

F.3d 88, 93 (2d Cir. 2001).

Defendants’ proposed counterclaim to cancel plaintiff’s mark on the basis that it is

generic is futile because, as set forth above, plaintiff’s mark, as a whole, is not generic; it is at

least descriptive. While the word “barbeque,” standing alone, may be generic, and, therefore, not

protectable; plaintiff’s service mark consists of a combination of two (2) words, i.e., the personal

name “Addy’s” together with the generic word, “barbeque;” and plaintiff’s registration

specifically disclaims the exclusive right to use the word “barbeque” apart from the mark as a

whole. Since defendants do not allege, much less establish, that the mark, as a whole, is a generic

term or common reference to goods or services, their proposed counterclaim to cancel plaintiff’s

mark on the basis that it is generic is futile. See, e.g. Brookfield, 2016 WL 6906713, at *3.

Defendants also seek to cancel plaintiff’s mark on the grounds that they “had authority

and consent to use the mark Addys [sic] BBQ and plaintiff filed and registered its mark in bad

faith and as retaliation to Cheema—his former partner. . . .” (Def. Mem. at 3). The Court

construes this proposed claim as alleging that plaintiff defrauded the USPTO by declaring on his

application to register the mark that “[t]o the best of [his] knowledge and belief, no other

persons, except, if applicable, concurrent users, have the right to use the mark in commerce,

either in the identical form or in such near resemblance as to be likely, when used on or in

connection with the goods/services of such other persons, to cause confusion or mistake, or to

deceive[,]” (Khan Decl., Ex. F), while aware that defendants were using, and had a right to use,

the mark, “Addy’s BBQ.” See generally MPC Franchise, LLC v. Tarntino, 826 F.3d 653, 658

(2d Cir. 2016) (“Under the Lanham Act, ‘any person who believes that he is or will be damaged’

may file a ‘petition to cancel a registration of a mark,’ for which ‘registration was obtained

fraudulently.’” (quoting 15 U.S.C. § 1064(3))).

“Fraud in procuring a trademark registration [] occurs when an applicant knowingly

makes false, material representations of fact in connection with his application[,]” MPC

Franchise, 826 F.3d at 658 (quotations, alterations and citation omitted)), “with the intent to

deceive the [US]PTO.” Id. at 659 (quotations and citation omitted); see also Orient Express

Trading Co., Ltd. v. Federated Dep’t Stores, Inc., 842 F.2d 650, 653 (2d Cir. 1988) (“The

allegedly fraudulent statements may not be the product of mere error or inadvertence, but must

indicate a deliberate attempt to mislead the PTO. . . . [T]he knowing misstatement must have

been with respect to a material fact—one that would have affected the PTO’s action on the

applications.” (quotations, alterations and citations omitted)). Since “mere negligence is not

sufficient to infer fraud on the PTO[,] . . . to succeed on a claim that a trademark holder procured

the mark by fraud, a plaintiff cannot merely show that the trademark holder should have known

that the application contained false statements of material fact.” MPC Franchise, 826 F.3d at 659

(quotations, alterations and citations omitted). “A party seeking cancellation of a registered

trademark on grounds of fraud must demonstrate the alleged fraud by clear and convincing

evidence.” MPC Franchise, 826 F.3d at 658 (quotations and citation omitted); accord Orient

Express, 842 F.2d at 653.

Based upon the record evidence, defendants’ claim seeking to cancel registration of

plaintiff’s service mark on the grounds of fraud is plausible. See, e.g. MPC Franchise, 826 F.3d

at 660-61 (affirming summary judgment on the plaintiff’s claim seeking cancellation of the

defendant’s mark on the basis that “[n]o genuine issue of material fact exist[ed] as to whether

[the defendant] knew that other entities had rights to use the mark in the very manner in which he

sought to use the mark, and whether he intended to mislead the PTO by attesting otherwise in his

trademark application.”); Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1210

(11th Cir. 2008) (“Purposely failing to disclose other users’ rights to use the same or similar

marks may qualify as a material omission justifying cancellation of a trademark.”); East West,

LLC v. Rahman, 896 F. Supp. 2d 488, 508-09 (E.D. Va. 2012) (granting summary judgment

cancelling the defendant’s registration based upon clear and convincing evidence demonstrating

that the defendant “knowingly made false, material misrepresentations as to exclusivity of use on

their registration application with the [USPTO].”); Automatic Washer Co. v. Easy Washing

Mach. Corp., 98 F. Supp. 445, 452 (N.D.N.Y. 1951) (finding that the plaintiff’s trademark was

invalid, and its registration should be cancelled, because it did not have exclusive use of the mark

prior to registration). Accordingly, defendants’ cross motion is granted to the extent that they are

granted leave to amend their answer to assert a counterclaim seeking to cancel plaintiff’s

registration of his service mark on the basis that the registration was obtained fraudulently,

provided that defendants serve and file the amended answer by no later than December 6,

2019, or they will be deemed to have waived their right to file an amended answer asserting such

counterclaim. However, construing the evidence in the light most favorable to plaintiff, genuine

issues of material fact exist with respect to that proposed counterclaim. Therefore, defendants’

cross motion is otherwise denied.

III. CONCLUSION

For the reasons set forth above, (i) plaintiff’s motion pursuant to Rule 65 of the Federal

Rules of Civil Procedure for a TRO and preliminary injunction enjoining and restraining

defendants from using the mark “Addy’s BBQ” and the domain name “addysbbq.com” is denied

in its entirety; (ii) defendants’ cross motion is granted to the extent that defendants are granted

leave to amend their answer to assert a counterclaim seeking to cancel the registration of

plaintiff’s mark pursuant Section 37 of the Lanham Act, 15 U.S.C. § 1119, on the basis that the

registration was obtained fraudulently, provided that defendants serve and file the amended

answer by no later than December 6, 2019, or they will be deemed to have waived their right

to file an amended answer asserting such counterclaim; and (iii) defendants’ cross motion is

otherwise denied.

SO ORDERED.

_ __/s/ Sandra J. Feuerstein___

Sandra J. Feuerstein

United States District Judge

Dated: November 6, 2019

Central Islip, New York