The opinion
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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RUBINSTEIN & ASSOCIATES, PLLC,
Plaintiff, MEMORANDUM AND ORDER
20-CV-4173 (RPK) (ST)
-against-
ENTREPRENEUR MEDIA, INC.,
Defendant.
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RACHEL P. KOVNER, United States District Judge:
Defendant Entrepreneur Media, Inc. (“EMI”) has federally registered the mark
ENTREPRENEUR. Plaintiff Rubinstein & Associates, PLLC (“Rubinstein”) has applied to
register the mark ENTREPRENAWYER. After learning of Rubinstein’s trademark application,
EMI contacted Rubinstein, expressing concern about the risk of confusion between the marks.
Later, EMI filed an opposition to the ENTREPRENAWYER registration with the U.S. Patent
and Trademark Office (“PTO”).
Rubinstein then filed this lawsuit invoking the Declaratory Judgment Act, 28 U.S.C.
§§ 2201 and 2202. Rubinstein principally asks the Court to declare that it has not infringed
EMI’s ENTERPRENEUR marks and that those marks are invalid. EMI, in turn, has filed a
motion to dismiss. EMI argues, as relevant here, that this Court lacks subject-matter
jurisdiction because there is no “substantial controversy between parties having legal interests,
of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Def.’s
Mem. of L. in Supp. of Mot. to Dismiss at 8 (“Def.’s Br.”) (Dkt. #17-1) (quoting MedImmune v.
Greentech, Inc., 549 U.S. 118, 127 (2007)). Magistrate Judge Tiscione issued a report and
recommendation (“R. & R.”) agreeing that the case should be dismissed for lack of subject-
matter jurisdiction. See R. & R. (Dkt. #25). As described below, I adopt Judge Tiscione’s R. &
R. and dismiss this lawsuit.
BACKGROUND
Rubinstein filed its application for trademark protection of the mark
ENTREPRENAWYER on February 29, 2020. See Compl. ¶¶ 13-14 (Dkt. #1); id. Ex. B (Dkt.
#1-2); Justman Decl. Ex. 2 (Dkt. #17-4).
On July 14, 2020, EMI sought an extension of time to oppose Rubinstein’s application
from the PTO. Compl. ¶ 16. The next day, EMI’s counsel contacted Rubinstein by email. Id.
¶ 17. The message states, in pertinent part:
We recently learned that you filed an intent-to-use trademark application for the
“ENTREPRENAWYER” trademark (App. No. 88/816134) in connection with:
“Marketing consulting; Marketing services; Advertising and marketing” in Class
35.
We further learned that you are using the ENTREPRENAWYER mark on social
media, such as LinkedIn. . . .
Given that your trademark contains a mark very similar to Entrepreneur Media’s
registered trademark, and the application covers nearly identical goods and/or
services, we are concerned that consumers may mistakenly believe that your
goods and/or services are related to or affiliated with Entrepreneur Media and its
ENTREPRENEUR® branded magazines and educational services.
The purpose of this letter is to bring to your attention Entrepreneur Media’s
trademark rights and ask that you contact us to discuss this matter. Please contact
me at [phone number omitted] at your earliest convenience.
Justman Decl. Ex. 4 (Dkt. #17-6).
Rubinstein responded by email less than ten minutes later. The message stated, in
pertinent part:
I will remove the mark from social media. However, the word entrepreneur in and
of itself cannot be trademarked unless disclaimed but for general uses.
This information goes back to 2L basic IP law training. There is no likelihood of
confusion, as it is clearly parody and based upon new creation of legal services.
If the mark is broader and is to be applied to every use of the word entrepreneur,
even a play on words, perhaps it’s time someone files for cancellation and a suit
for unfair competition.
For now, I will remove the use of the mark, but regarding the opposition, I am
quite well suited to handle this myself and I intend to.
Justman Decl. Ex. 5 (Dkt. #17-7). Rubinstein then stopped using its ENTREPRENAWYER
mark. Compl. ¶ 15.
The parties continued exchanging email messages in what they both describe as
settlement discussions. See Def.’s Br. at 6; Pl.’s Mem. of L. in Opp’n to Dismissal at 17 (“Pl.’s
Opp’n”) (Dkt. #18). Neither party has filed those subsequent messages with their motion
papers. But Rubinstein alleges that one message from EMI asserted that the parties’ marks
were “similar” and that another message stated that EMI “believe[s] that a likelihood of
confusion exists.” Compl. ¶¶ 18-19. Rubinstein alleges that in a third email message, EMI
demanded “some sort of modification” to Rubinstein’s mark. Id. ¶ 20.
On August 18, 2020, Rubinstein filed a petition before the PTO’s Trademark Trial and
Appeal Board (“TTAB”) seeking to cancel EMI’s ENTREPRENEUR marks. Id. ¶ 21; see
Justman Decl. Ex. 8 (Dkt. #17-10).
On September 2, 2020, EMI filed a notice of opposition to Rubinstein’s application to
register the ENTREPRENAWYER mark with the PTO. EMI asserted a likelihood of confusion
with its ENTREPRENEUR marks. Compl. ¶ 22; see Justman Decl. Ex. 9 (Dkt. #17-11).
Five days later, Rubinstein filed this lawsuit. Its complaint requests a declaratory
judgment that (1) Rubinstein’s ENTREPRENAWYER mark does not infringe, and has not
infringed, EMI’s ENTREPRENEUR marks; (2) EMI’s ENTREPRENEUR trademarks are
“invalid and subject to cancellation” because they are generic; (3) Rubinstein’s
ENTREPRENAWYER mark does not dilute EMI’s trademarks; and (4) Rubinstein’s
ENTREPRENAWYER mark does not unfairly compete with EMI’s marks. Compl. ¶¶ 27-58.
EMI moved to dismiss the action based on lack of subject-matter jurisdiction under
Federal Rule of Civil Procedure 12(b)(1), or, in the alternative, based on failure to state a claim
under Rule 12(b)(6). See Def.’s Mot. (Dkt. #17). Judge Feuerstein, the then-assigned district
judge, referred EMI’s motion to Judge Tiscione for a report and recommendation.
Judge Tiscione has recommended granting EMI’s motion to dismiss based on lack of
subject-matter jurisdiction. Judge Tiscione observed that the Declaratory Judgment Act creates
jurisdiction only “where there exists a ‘case of actual controversy.’” R. & R. at 4 (quoting 28
U.S.C. § 2201(a)). He observed that “the threat of future litigation is relevant to the
identification of an actual controversy.” Id. at 5. In contrast, he wrote, the “existence of a
dispute before the TTAB over the registration of a party’s mark, on its own” is insufficient to
establish a justiciable controversy. Ibid. (quoting 1-800-Flowers.com, Inc. v. Edible
Arrangements, LLC, 905 F. Supp. 2d 451, 454 (E.D.N.Y. 2012)).
Judge Tiscione found no actual controversy here, principally because he concluded that
EMI’s communications with Rubinstein were best understood as objections to the proposed
registration of ENTERPRENAWYER, rather than demands that Rubinstein discontinue use of
that mark or threats of litigation. See id. at 6-7. He found analogous past decisions that had
found no justiciable controversy where a markholder had merely objected to the registration of
another mark or claimed a likelihood of confusion. See id. at 6-8 (citing Vina Casa Tamaya
S.A. v. Oakville Hills Cellar, Inc., 784 F. Supp. 2d 391, 395-96 (S.D.N.Y. 2011); I.O.B. Realty,
Inc. v. Patsy’s Brand, Inc., No. 19-CV-2776, 2020 WL 2086096, at *3 (S.D.N.Y. Apr. 30,
2020); 1-800-Flowers.com, Inc., 905 F. Supp. 2d at 455-58). Judge Tiscione observed that the
trademark decisions finding a justiciable case on which Rubinstein relied were “easily
distinguishable.” Id. at 8. In those cases, he explained, the defendant had threatened litigation
or had objected to another party’s use of a particular mark. Id. at 8-9 (discussing Classic
Liquor Importers, Ltd. v. Spirits Int’l B.V., 151 F. Supp. 3d 451, 457 (S.D.N.Y. 2015); Gelmart
Indus., Inc. v. Eveready Battery Co., 120 F. Supp. 3d 327, 332 (S.D.N.Y. 2014); Lee v.
Makhnevich, No. 11-CV-8665, 2013 WL 1234829, at *2, *4 (S.D.N.Y. Mar. 27, 2013)).
Judge Tiscione also rejected Rubinstein’s suggestion that a justiciable controversy exists
between EMI and Rubinstein because EMI had filed a lawsuit against Kelly Roach—a different
party that had contested EMI’s ENTREPRENEUR trademarks before the TTAB. See R. & R.
at 10. Judge Tiscione noted cases “establish[ing] that a party’s suit against a non-party does not
yield an actual controversy for purposes of the Declaratory Judgment Act.” Id. at 11 (citing
Avon Prods., Inc. v. Moroccanoil, Inc., No. 12-CV-4507, 2013 WL 795652, at *5 (S.D.N.Y.
Mar. 4, 2013); Indigodental GMBH & Co. KG v. Ivoclar Vivadent, Inc., No. 08-CV-7657, 2008
WL 5262694, at *3 (S.D.N.Y. Dec. 10, 2008)). Moreover, he observed that Rubinstein had not
established that Rubinstein and Roach were similarly situated. Id. at 10 & n.2. Indeed, he
observed, Rubinstein had not “submit[ed] evidence detailing th[e] proceedings” that EMI had
brought against Roach. Id. at 10. “[C]onsidering the totality of the circumstances,” Judge
Tiscione concluded that Rubinstein had failed to establish an actual controversy sufficient to
support jurisdiction. Id. at 11-12.
Rubinstein filed timely objections. See Pl.’s Obj. to R. & R. (“Pl.’s Obj.”) (Dkt. #26).
STANDARD OF REVIEW
I. Motion to Dismiss
To survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(1), a
plaintiff must show that the Court has “the statutory or constitutional power to adjudicate” the
action. Cortlandt St. Recovery Corp. v. Hellas Telecomms., S.A.R.L., 790 F.3d 411, 417 (2d
Cir. 2015). Where, as here, the facts bearing on jurisdiction are not in dispute, “the district
court must take all uncontroverted facts in the complaint . . . as true, and draw all reasonable
inferences in favor of the party asserting jurisdiction.” Tandon v. Captain’s Cove Marina of
Bridgeport, Inc., 752 F.3d 239, 243 (2d Cir. 2014); see Charles Alan Wright & Arthur R.
Miller, 5B Fed. Prac. & Proc. Civ. § 1350 (3d ed. 2021) (“A facial attack challenges subject
matter jurisdiction without disputing the facts alleged in the complaint and requires the court to
treat the allegations of the complaint as true.”).
II. Review of a Magistrate Judge’s Report and Recommendation
If a party timely objects to a magistrate judge’s recommendation on a dispositive issue,
the district court must “determine de novo” those parts of the ruling that have been “properly
objected to.” Fed. R. Civ. P. 72(b)(3); see 28 U.S.C. § 636(b)(1). Those parts of an R. & R.
that are uncontested, or to which no proper objection has been made, may be reviewed for
“clear error.” Alvarez Sosa v. Barr, 369 F. Supp. 3d 492, 497 (E.D.N.Y. 2019) (citation
omitted); see Nelson v. Smith, 618 F. Supp. 1186, 1189 (S.D.N.Y. 1985) (citing Fed. R. Civ. P.
72 advisory committee’s note to 1983 addition).
DISCUSSION
EMI’s motion to dismiss is granted based on Rubinstein’s failure to establish a
justiciable controversy under the Declaratory Judgment Act. That statute provides that “[i]n a
case of actual controversy within its jurisdiction . . . any court of the United States . . . may
declare the rights and other legal relations of any interested party seeking such declaration,
whether or not further relief is or could be sought.” 28 U.S.C. § 2201(a). A “case of actual
controversy” exists only if there is a dispute that is “‘definite and concrete,” “real and
substantial,” and would “admit of specific relief through a decree of conclusive character, as
distinguished from an opinion advising what the law would be upon a hypothetical state of
facts.” MedImmune, 549 U.S. at 127. “[T]he threat of litigation” is “relevant in determining
whether an actual controversy exists.” Nike, Inc. v. Already, LLC, 663 F.3d 89, 96 (2d Cir.
2011). Judge Tiscione concluded that no justiciable controversy exists here after determining
that EMI’s messages were objections to the registration of ENTERPRENAWYER, rather than
threats of litigation or demands that Rubinstein discontinue use of that mark. See R. & R. at 6-
7. As explained below, Rubinstein’s objections to Judge Tiscione’s conclusions lack merit.
Rubinstein first argues that Judge Tiscione failed to employ the MedImmune framework,
and instead relied on more stringent Second Circuit caselaw on the Declaratory Judgment Act
that predates the MedImmune decision. Pl.’s Obj. at 6 (“[T]he R&R appears to be relying on
the discredited pre-MedImmune ‘reasonable apprehension’ test.”); see id. at 4. That argument
lacks merit. Judge Tiscione expressly recognized that the MedImmune framework governs.
See R. & R. at 4-5, 11-12. And he did not invoke the “reasonable apprehension” test at all.
While Rubinstein may disagree with Judge Tiscione’s application of MedImmune, Rubinstein
offers no persuasive evidence that Judge Tiscione used the wrong legal test.
Rubinstein next submits that Judge Tiscione erred because EMI’s communications with
Rubinstein are best read as threatening litigation. Rubinstein does not dispute that no
justiciable controversy exists merely because two parties have a dispute over whether the PTO
should register a mark. See R. & R. at 5 (citing 1-800-Flowers.com, 905 F. Supp. 2d at 454);
see also I.O.B. Realty, Inc., No. 19-CV-2276, 2020 WL 2086096, at *2; Halo Lifestyle LLC v.
Halo Farm, Inc., No. 18-CV-9459, 2019 WL 1620744, at *3 (S.D.N.Y. Apr. 16, 2019).
Instead, Rubinstein relies on cases finding a justiciable controversy after a markholder
threatened an infringement suit. See Pl.’s Obj. at 4 (stating that declaratory judgment actions
“are particularly useful in resolving trademark disputes where, as here, a trademark owner
threatens to sue for infringement”); id. at 6-7 (arguing that justiciable controversy exists based
on purported threat to sue). Rubinstein acknowledges that EMI “did not state ‘we will sue you
unless you stop using the mark,’” but contends that the message of EMI’s communications was
“clear—stop your use or we will sue you.” Id. at 6.
Rubinstein’s objection lacks merit because EMI’s communications are not best read as
threats of litigation. Rubinstein principally focuses on EMI’s July 15 email. But EMI sent that
email the day after seeking an extension of its deadline to respond to Rubinstein’s application to
register its ENTREPRENAWYER mark, and the message itself repeatedly referenced the PTO
application. See Justman Decl. Ex. 4. The text and context of the July 15 email thus suggest
that the message was focused on Rubinstein’s attempt to register the ENTREPRENAWYER
mark. To be sure, the email stated that EMI had “learned that [Rubinstein was] using the
ENTREPRENAWYER mark on social media.” Id. at 2. But EMI did not assert that the use
was infringing or demand that it cease. See ibid. Instead, after expressing a concern about risk
of confusion between the two marks, EMI simply “ask[ed Rubinstein] to contact us to discuss
this matter.” Ibid. These statements can hardly be characterized as “bully[ing],” Pl.’s Obj. at 6,
“threatening,” id. at 5, or indicating that EMI would turn to litigation to protect its trademark
rights. The brief snippets from settlement discussions that Rubinstein invokes also fall far
short of threatening litigation.
Rubinstein next repeats its contention that EMI’s lawsuit against a different party—
Kelly Roach—establishes an actual controversy between EMI and Rubinstein. See Pl.’s Obj. at
7 & n.1. But Rubinstein fails to demonstrate any flaw in Judge Tiscione’s explanation of why
that is not so. Judge Tiscione observed that courts in this circuit have declined to find a
justiciable controversy based on markholder’s lawsuit against a different infringer. See R. & R.
at 10-11. Rubinstein has cited no case taking a contrary approach. See Pl.’s Obj. at 7. And
Rubinstein has offered scant detail about EMI’s suit against Roach, making it impossible to
infer that EMI’s action against Roach is a harbinger of litigation against Rubinstein. On this
record, EMI’s suit against Roach adds little.
CONCLUSION
Rubinstein’s objections are overruled. Having found no error in the portions of Judge
Tiscione’s R. & R. to which Rubinstein objected, and no clear error in the remainder of the
R. & R., the R. & R. is adopted in its entirety. EMI’s motion to dismiss under Federal Rule of
Civil Procedure 12(b)(1) is granted and this case is dismissed for lack of subject-matter
jurisdiction.
The Clerk of the Court shall close this case.
SO ORDERED.
/s/ Rachel Kovner
RACHEL P. KOVNER
United States District Judge
Dated: August 13, 2021
Brooklyn, New York