# OfferUp, Inc. v. Ramtin Software Solutions LLC

> District Court, E.D. New York · September 30, 2024

URL: https://www.frixlaw.com/law-library/cases/10659639

## Case

- **Court:** District Court, E.D. New York
- **Decided:** September 30, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10659639

## How later opinions describe it (automated extraction)

- finding similarity of “L’eggs” and “Leg Looks” favored infringement finding because the two marks, “although not identical, are perceived similarly by the eye and ear”
- noting “tens of millions of dollars” in sales and “widespread recognition” in finding acquired distinctiveness of plaintiff’s “Black Ice” products despite “the fact that the words ‘black’ and ‘ice’ appear in the marks on other air fresheners”

## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
-------------------------------------------------------------x
OFFERUP INC.,

Plaintiff, MEMORANDUM AND ORDER
v. 23-CV-6014 (RPK) (CLP)

RAMTIN SOFTWARE SOLUTIONS, LLC,

Defendant.
-------------------------------------------------------------x
RACHEL P. KOVNER, United States District Judge:
Offerup Inc. brings this action against Ramtin Software Solutions, LLC alleging trademark
infringement and related claims under state and federal law. Defendant has moved to dismiss
plaintiff’s claims under Rule 12(b)(6) of the Federal Rules of Civil Procedure. For the reasons
explained below, defendant’s motion to dismiss is denied.
BACKGROUND
The following facts are taken from the complaint and assumed true for the purposes of this
order.
Since 2011, plaintiff has operated an “online marketplace platform” accessible through the
plaintiff’s mobile applications and website. Compl. ¶ 8 (Dkt. #1).
In January 2013, plaintiff obtained from the United States Patent and Trademark Office
(“USPTO”) a word mark for “OFFERUP” for International Classes 9 and 35. Id. ¶ 11. This
trademark has been in continuous use for at least five years since its registration, and it has
accordingly become “incontestable.” Id. ¶¶ 11, 12; see Compl. Ex. 1 (Dkt. #1-1). In May 2018,
plaintiff obtained the same for International Classes 38 and 42. Compl. ¶ 14; see Compl. Ex. 2
(Dkt. #1-2).
en
OFFERUP, US. Registration No. 5,840,340 (Dkt. #39-4).
Defendant operates a similar, competing platform and “owns and controls the Google Play
Store listing for the ‘Offeria (Buy & Sell)’ Google Play mobile application.” Compl. 4§ 1, 17, 20.
The listing appeared in March 2023 as the following:
eB Google Play Games Apps Movies&TV Books _—Kids Q @
Offeria (Buy & Sell)

Ek. -

Om ge | So Be PME |...

About thisapp >

Id. §17. Defendant also allegedly “owns and controls the Offeria website found at
www.offeria.com,” id. § 18, and, in September 2022, filed an application with the USPTO for a
word mark for “OFFERIA” for International Class 9, id. § 19.

Plaintiff filed this action in May 2023 in the United States District Court for the Central
District of California. See Compl. The case was transferred to this Court on defendant’s motion.
See Order Granting Mot. for Change of Venue (Dkt. #19). The complaint asserts four causes of
action: (1) trademark infringement under 15 U.S.C. § 1114, (2) false designation of origin under

15 U.S.C. § 1125(a), (3) common law trademark infringement under California state law, and
(4) common law unfair competition under California state law. Compl. ¶¶ 29–61. Plaintiff seeks
damages, injunctive relief, and declaratory relief. Id. ¶¶ A–N.
Defendant has moved to dismiss plaintiff’s claims under Federal Rule of Civil
Procedure 12(b)(6), arguing (1) that plaintiff’s claims are time-barred, (2) that plaintiff’s
trademark is generic, and (3) that plaintiff fails to adequately plead a likelihood of confusion
between the relevant marks. See Def.’s Mot. to Dismiss (Dkt. #38); Def.’s Mem. in Supp. (Dkt.
#39). Because it is unclear whether the case was transferred pursuant to 28 U.S.C. § 1404 or
§ 1406(a), see Order Granting Mot. for Change of Venue; Def.’s First Mot. to Dismiss 14 (Dkt.
#11); Pl.’s First Opp’n 2 (Dkt. #17), defendant argues for dismissal on the basis of both California

and New York law, see Def.’s Mem. in Supp.; Gerena v. Korb, 617 F.3d 197, 204 (2d Cir. 2010).
Neither party, however, suggests that the choice of law impacts the disposition of defendant’s
motion. See Def.’s Mem. in Supp.; Pl.’s Opp’n 4–5 (Dkt. #40); Def.’s Reply (Dkt. #41); First Hill
Partners, LLC v. BlueCrest Cap. Mgmt. Ltd., 52 F. Supp. 3d 625, 632–33 (S.D.N.Y. 2014) (noting
that whether a choice-of-law analysis is necessary turns on whether “each jurisdiction provides
different substantive rules and those differences are relevant to the issue at hand[ ] and . . . have a
significant possible effect on the outcome” (citation and quotation marks omitted; alteration in
original).
STANDARD OF REVIEW
Federal Rule of Civil Procedure 12(b)(6) permits a defendant to move to dismiss a
complaint for “failure to state a claim upon which relief can be granted.” To avoid dismissal on
that basis, a complaint must “state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal,

556 U.S. 662, 678 (2009). “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.” Ibid. (discussing Fed. R. Civ. P. 8). The facial “plausibility standard is not akin to a
probability requirement.” Ibid. (quotation marks omitted) (citing Bell Atl. Corp. v. Twombly, 550
U.S. 544, 556–57 (2007)). “A well-pleaded complaint may proceed even if it strikes a savvy judge
that actual proof [of the facts alleged] is improbable, and that a recovery is very remote and
unlikely.” Twombly, 550 U.S. at 556 (quotation marks omitted).
When considering a motion under Rule 12(b)(6), a court may consider only (i) the
complaint itself, (ii) documents either attached to the complaint or incorporated in it by reference,
(iii) documents the plaintiff relied on and knew of when bringing suit, and (iv) matters in the public

record that are subject to judicial notice. See, e.g., ATSI Commc’ns, Inc. v. Shaar Fund, Ltd., 493
F.3d 87, 98 (2d Cir. 2007); Sira v. Morton, 380 F.3d 57, 67 (2d Cir. 2004); Leonard F. v. Israel
Disc. Bank of N.Y., 199 F.3d 99, 107 (2d Cir. 1999). The Court “assume[s] the[] veracity” of the
“factual allegations” in the complaint but not its “legal conclusions,” Iqbal, 556 U.S. at 678–79,
and “draw[s] all reasonable inferences in favor of the plaintiff.” Buon v. Spindler, 65 F.4th 64, 76
(2d Cir. 2023) (citation omitted).
DISCUSSION
Defendant’s motion to dismiss for failure to state a claim is denied. Defendant has failed
to establish that plaintiff’s claims are time-barred or that plaintiff’s trademark is generic. Plaintiff
also adequately alleges a likelihood of confusion between the relevant marks.

I. Defendant Fails to Establish Either a Statute-of-Limitations or Laches Defense.
Defendant’s motion to dismiss plaintiff’s claims as time-barred cannot succeed at this stage
of the case. That is so even assuming arguendo that the complaint incorporates by reference the
full Google Play Store listing which describes defendant’s mobile application as “[r]eleased on
Dec 15, 2015” and that the Court may take notice that the “Offeria Website” cited in paragraph 18
of the complaint purports to be owned by a non-party. Def.’s Mem. in Supp. 6; Def.’s Mem. in
Supp. Ex. A, at 4 (Dkt. #39-2).
Under federal law, statutes of limitations and laches are affirmative defenses. See Fed. R.
Civ. P. 8(c)(1). An “affirmative defense . . . often requires consideration of facts outside of the
complaint,” and is therefore generally “inappropriate to resolve on a motion to dismiss.” Kelly-

Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013). “Affirmative defenses may be adjudicated
at this stage in the litigation, however, where the facts necessary to establish the defense are evident
on the face of the complaint.” Ibid.
“Because the Lanham Act establishes no limitations period for claims alleging unfair
competition . . . and because there is no corresponding federal statute of limitations,” Conopco,
Inc. v. Campbell Soup Co., 95 F.3d 187, 191 (2d Cir. 1996), “it is the equitable defense of laches,
not a statute of limitations, that is the source from which to measure delay in Lanham Act cases,”
J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 31:33 (5th ed. 2023)
(“McCarthy”); accord Belmora LLC v. Bayer Consumer Care AG, 987 F.3d 284, 293–94 (4th Cir.
2021); Kars 4 Kids Inc. v. Am. Can!, 8 F. 4th 209, 220 (3d Cir. 2021). The analogous state statute
of limitations nonetheless creates a presumption of laches for claims filed outside the statute-of-
limitations period. Conopco, 95 F.3d at 191. If plaintiff’s claim falls within the applicable state
statute of limitations, however, “the burden is on the defendant to show . . . circumstances exist

which require the application of the doctrine of laches.” Ibid. (citation omitted).
Even if California’s four-year statute of limitations is the analogous statute of limitations,
see California Code of Civil Procedure § 343—rather than the six-year limitations period
applicable under New York law, Conopco, 95 F.3d at 191—defendant fails to establish a laches
defense based on the facts in the complaint. Laches requires unreasonable delay by the plaintiff
and prejudice to the defendant. Conopco, 95 F.3d at 192. Under both New York and California
law, “[t]he laches clock begins to run when the trademark owner ‘knew or should have known, not
simply that [the infringer] was using the potentially offending mark, but that [it] had a provable
infringement claim against [the infringer.]’” Excelled Sheepskin & Leather Coat Corp. v. Oregon
Brewing Co., 897 F.3d 413, 419 (2d Cir. 2018) (alterations in original) (quoting ProFitness

Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy, 314 F.3d 62, 70 (2d Cir.
2002)); accord Tillamook Cnty. Smoker, Inc. v. Tillamoook Cnty. Creamery Ass’n, 465 F.3d 1102,
1108 (9th Cir. 2006). “[T]he burden is on the defendant to establish when a federal claim accrues.”
Gonzalez v. Hasty, 651 F.3d 318, 322 (2d Cir. 2011). “[W]hether a plaintiff had sufficient facts to
place it on inquiry notice is ‘often inappropriate for resolution on a motion to dismiss under Rule
12(b)(6).’” LC Cap. Partners v. Frontier Ins. Grp., 318 F.3d 148, 156 (2d Cir. 2003) (quoting
Marks v. CDW Comput. Ctrs., Inc., 122 F.3d 363, 367 (7th Cir. 1997)).
Defendant fails to show that plaintiff’s claims were unreasonably delayed. Plaintiff’s
claims are not presumptively barred on laches grounds because defendant cannot establish that
plaintiff knew or should have known of a provable infringement claim more than four years before
bringing suit. Defendant’s reliance on the 2015 release of its mobile application is misplaced. The
mere fact that defendant listed its mobile application in 2015, without more, does not establish that
plaintiff should have known in 2015 of its infringement claim against defendant. The complaint

does not allege any facts that compel the inference that plaintiff must have known about that 2015
listing, which plaintiff may have reasonably missed due to defendant’s relative obscurity, see
Compl. ¶¶ 8, 17, and the “massive volume” of applications listed on the Google Play Store, Omega
Eng’g v. Omega Shielding, No. 96-CV-01333 (PCD), 1998 WL 35256542, at *3 (D. Conn. Mar.
3, 1998) (holding that plaintiff lacked constructive notice because “there is no overwhelming
circumstantial evidence . . . that plaintiff must have been aware of defendant’s use of the contested
mark . . . [such as] prior registration,” despite defendant’s listing in a voluminous trade journal);
see McCarthy § 31:38 (“A plaintiff is not necessarily put on notice for laches to run merely because
defendant listed its mark in a telephone directory.” (citing Nat’l Trailways Bus Sys. v. Trailway
Van Lines, Inc., 269 F. Supp. 352, 359 (E.D.N.Y. 1965))).

Instead, the earliest that plaintiff’s constructive knowledge might be inferred from the
complaint is in September 2022 when defendant applied to register its trademark with the USPTO.
See Compl. ¶ 19. Compare Easton v. Primal Wear, Inc., No. 17-CV-06081, 2019 WL 1430985,
at *8 (N.D. Ill. Mar. 29, 2019) (“Absent some further evidence that [plaintiff] should have been
aware of [defendant’s] potentially infringing conduct at the time it registered its trademarks, the
registration itself tells us relatively little.”), with Pinkette Clothing, Inc. v. Cosm. Warriors Ltd.,
894 F.3d 1015, 1025 (9th Cir. 2018) (“[Plaintiff] should have known about its claims no later than
when [defendant]’s registration issued in July 2010.”). But plaintiff filed suit nine months after
that. Defendant cannot carry its burden in showing that plaintiff unreasonably delayed in filing
suit based on these facts, or that it was prejudiced by such a delay. See Excelled, 897 F.3d at 420.
Defendant has therefore failed to show at this stage that plaintiff’s federal claims are time-barred.
II. Defendant’s Genericness Defense Is Misplaced.
Defendant next argues that plaintiff’s federal- and state-law claims should all be dismissed
because those claims all depend on plaintiff’s trademark protection of the “generic term ‘Offer.’”

Def.’s Mem. in Supp. 13–14. Even assuming that defendant has not forfeited this argument as
plaintiff argues, this argument does not support dismissal, because it improperly aims a genericness
defense at the term “offer” instead of the plaintiff’s mark “OfferUp.”
“A generic word cannot be validly registered as a trademark.” FragranceNet.com, Inc. v.
Les Parfums, Inc., 672 F. Supp. 2d 328, 333 (E.D.N.Y. 2009) (citing CES Publ’g Corp. v. St. Regis
Publ’ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975)). “A mark is generic if it is a common description of
products and refers to the genus of which the particular product is a species.” Lane Cap. Mgmt.,
Inc. v. Lane Cap. Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999). Whether a mark is properly
classified as generic “is a factual question” that depends on “how the purchasing public views the
mark.” Ibid. (citation omitted). “The general rule is that the genericness of a composite is

determined by examining the composite as a whole rather than examining its constituent parts
individually.” McCarthy § 12:39; accord Courtenay Commc’ns Corp. v. Hall, 334 F.3d 210, 215
(2d Cir. 2003). Because plaintiff’s mark, “OfferUp,” is registered, see Compl. ¶¶ 11, 12, “it is
presumed not to be generic,” FragranceNet.com, 672 F. Supp. 2d at 333 (citing Reese Pub. Co. v.
Hampton Int’l Commc’ns, Inc., 620 F.2d 7, 11 (2d Cir.1980)).
Defendant fails to overcome that presumption based on allegations regarding the public
perception of the term “offer.” Def.’s Mem. in Supp. 13–14. That argument is misplaced because
the plaintiff’s mark is “OfferUp” not “offer.” See McCarthy § 12:39; Courtenay, 334 F.3d at 215
(“The district court erred when it did not treat [‘iMarketing News’] as a composite mark.”); cf.
Forschner Grp., Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 355 (2d Cir. 1994) (“[T]he phrase
Swiss Army knife is not geographically descriptive within the meaning of the Lanham Act unless
the phrase, considered as a whole, is a designation of geographic origin.”).
Further, defendant cannot demonstrate genericness based on facts outside the complaint.

In adjudicating a motion to dismiss, the Court is limited to “[t]he pleadings and documents
necessarily relied upon by plaintiff’s complaint.” Courtenay, 334 F.3d at 215. That material here
is “insufficient for determining the critical fact of how the public views the [OfferUp] mark.” Ibid.
III. Plaintiff Has Adequately Pleaded a Likelihood of Confusion.
Finally, defendant is not entitled to dismissal on the theory that plaintiff did not adequately
plead a “likelihood of confusion between the Parties’ respective marks.” Def.’s Mem. in Supp.
14.
A. The complaint adequately pleads a likelihood of confusion to support
plaintiff’s federal claims.
Plaintiff has adequately pleaded a likelihood of confusion to support both its infringement
claim and its unfair competition claim under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a). To
establish a claim under Ҥ 1114 of the Lanham Act, [a] plaintiff in a trademark infringement action
must show that defendant (1) without consent, (2) used in commerce, (3) a reproduction, copy or
colorable imitation of plaintiff’s registered mark, as part of the sale or distribution of goods or
services, and (4) that such a use is likely to cause confusion.” Gruner + Jahr USA Publ’g v.
Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993). Unfair competition claims are analyzed
under the same test as is used for infringement claims under the Lanham Act. See Virgin Enters.

Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003) (“A claim of trademark infringement, whether
brought under 15 U.S.C. § 1114(1) . . . or 15 U.S.C. § 1125(a) . . . is analyzed under the [same]
test.”); see also, e.g., Mattel, Inc. v. Arming, No. 18-CV-8824 (LAP), 2021 WL 3683871, at *5
(S.D.N.Y. Aug. 18, 2021); Richemont N. Am., Inc. v. Huang, No. 12-CV-4443 (KBF), 2013 WL
5345814, at *5 n.15 (S.D.N.Y. Sept. 24, 2013); New W. Corp. v. NYM Co. of Cal., 595 F.2d 1194,
1201 (9th Cir. 1979) (“Whether we call the violation infringement, unfair competition or false
designation of origin, the test is identical.”).

Defendant contends that plaintiff’s trademark-infringement and unfair-competition claims
should be dismissed because plaintiff fails to adequately plead a likelihood of confusion—“the key
element” in a trademark infringement suit. Gruner + Jahr USA Publ’g, 991 F.2d at 1077. To
determine whether a likelihood of confusion exists, courts apply Judge Friendly’s eight-factor
balancing test from Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961),
examining the
(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the
products and their competitiveness with one another; (4) evidence that the senior
user may ‘bridge the gap’ by developing a product for sale in the market of the
alleged infringer’s product; (5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith; (7) respective quality
of the products; and (8) sophistication of consumers in the relevant market.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009) (citation
omitted); see Polaroid, 287 F.2d at 495. “[T]he Polaroid test . . . is a fact-intensive inquiry that
depends greatly on the particulars of each case.” Kelly-Brown, 717 F.3d at 307. “Claims, however,
may be dismissed as a matter of law where the court is satisfied that the products or marks are so
dissimilar that no question of fact is presented.” Pirone v. MacMillan, Inc., 894 F.2d 579, 584 (2d
Cir. 1990) (quotation marks and citations omitted); see also Portkey Techs. Pte Ltd. v.
Venkateswaran, No. 23-CV-5074 (JPO), 2024 WL 3487735, at *3 (S.D.N.Y. July 19, 2024) (“But
such dismissals are rare and typically for reasons . . . such as clear parody or a total absence of
proximity between the marks.”).
Plaintiff has adequately pleaded likelihood of confusion under the Polaroid factors.
First, the strength factor favors plaintiff at this stage. “The strength of a mark is determined
by its tendency to uniquely identify the source of the product.” Star Indus., Inc. v. Bacardi & Co.
Ltd., 412 F.3d 373, 384 (2d Cir. 2005). A mark is strong if it “is distinctive, either inherently or
by virtue of having acquired secondary meaning.” Ibid. “Marks are classified,” from weakest to

strongest, “as (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful.” Id. at 384–
85 (brackets, quotation marks, and citation omitted). The Second Circuit defines these categories
as follows:
Generic marks are those consisting of words identifying the relevant category of
goods or services. They are not at all distinctive and thus are not protectable under
any circumstances. Descriptive marks are those consisting of words identifying
qualities of the product. They are not inherently distinctive, but are protectable
provided they have acquired secondary meaning, which we sometimes refer to as
acquired distinctiveness. Suggestive marks and arbitrary or fanciful marks are each
inherently distinctive. Suggestive marks are those that are not directly descriptive,
but do suggest a quality or qualities of the product, through the use of imagination,
thought and perception. Arbitrary or fanciful marks are ones that do not
communicate any information about the product either directly or by suggestion.

Id. at 385 (brackets, quotation marks, and citation omitted).
The OfferUp mark is not a generic mark that merely “identif[ies] the relevant category of
goods or services,” ibid., and assuming arguendo that the mark is descriptive, plaintiff has
adequately pleaded at least acquired distinctiveness. Plaintiff alleges that its “OfferUp mobile
app[] [has] ranked in the top four most downloaded applications in both the Apple App Store and
Google Play Store’s lifestyle and shopping categories,” “facilitat[ed] over $14 billion in
transactions” in 2016, and “has been downloaded over 100 million times.” Compl. ¶ 8; see Car-
Freshner Corp. v. Am. Covers, LLC, 980 F.3d 314, 329 (2d Cir. 2020) (noting “tens of millions of
dollars” in sales and “widespread recognition” in finding acquired distinctiveness of plaintiff’s
“Black Ice” products despite “the fact that the words ‘black’ and ‘ice’ appear in the marks on other
air fresheners”). Moreover, acquired distinctiveness is attainable “through the mark’s uncontested
use for five years.” The Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 961 (2d Cir. 1996).
The incontestable status of plaintiff’s mark thus further supports a conclusion that the mark is
strong even if it is properly classed as descriptive. Ibid. (finding at the summary-judgment stage
that plaintiff’s descriptive mark “strong for the purposes of the Polaroid inquiry” due to its

“uncontested use for five years”). Ultimately, with limited evidence available at this stage
regarding many factors used to demonstrate secondary meaning—such as “advertising
expenditures,” “consumer studies linking the mark to a source,” “unsolicited media coverage of
the product,” “sales success,” and “attempts to plagiarize the mark”—the fact that plaintiff “has
raised some allegations supporting strength . . . suffices for the moment.” Lopez v. Adidas Am.,
Inc., No. 19-CV-7631 (LJL), 2020 WL 2539116, at *9 (S.D.N.Y. May 19, 2020) (citation omitted).
Second, the similarity factor favors plaintiff, albeit slightly. In determining similarity,
“courts must analyze the mark’s overall impression on a consumer, considering the context in
which the marks are displayed and the totality of factors that could cause confusion among
prospective purchasers.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 117

(2d Cir. 2006) (citation and quotation marks omitted). “OfferUp” and “Offeria” are seven-
character derivations of the same core word, “offer.” Defendant emphasizes the differences in the
two logos, see Def.’s Mem. in Supp. 7–8, 13–14, but the Second Circuit has repeatedly warned
against over-reliance on this sort of side-by-side comparison. See, e.g., MidCap Bus. Credit, LLC
v. MidCap Fin. Tr., No. 22-CV-713, 2022 WL 17175400, at *2 (2d Cir. Nov. 23, 2022) (reversing
grant of motion to dismiss); Louis Vuitton, 454 F.3d at 117 (“The district court erred because it
based its determination that confusion between the . . . marks was unlikely at least in part on an
overemphasized side-by-side comparison.”). Indeed, plaintiff’s “mark stretches beyond the logo
to the words” themselves. The Sports Auth., Inc., 89 F.3d at 962.
Defendant has therefore not established, at least at this stage of the case, that the disparate
appearance of the two logos precludes a finding of similarity despite the resemblance between the
word marks themselves. See RVC Floor Decor, Ltd. v. Floor & Decor Outlets of Am., Inc., 527
F. Supp. 3d 305, 323 (E.D.N.Y. 2021) (finding on motion for summary judgment that “[t]he marks

at issue—‘Floor Decor’ and ‘Floor & Decor’—are ‘strikingly similar’” even though “the marks
use different typefaces and have an adjacent symbol”); Berkshire Fashions, Inc. v. Sara Lee Corp.,
725 F. Supp. 790, 795 (S.D.N.Y. 1989) (finding after a bench trial that the marks ENERGIZER
and SHEER ENERGY “have a high degree of similarity, and are, indeed, confusingly similar” due
to “the use of the root word ‘energy’ to define the principal expectation of the purchaser”), aff’d
sub nom. 904 F.2d 33 (2d Cir. 1990); see also Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,
465 (4th Cir. 1996) (finding similarity of “L’eggs” and “Leg Looks” favored infringement finding
because the two marks, “although not identical, are perceived similarly by the eye and ear”). That
is especially so here because, as discussed further below, the parties offer the same product in the
same market and thus present their marks to consumers in the shared context of mobile app stores.

See Am. Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103, 107 (2d Cir. 1978) (reversal
denial of preliminary injunction by “Roach Motel” mark owner against “Roach Inn” mark owner
despite the latter’s “juxtaposition of [a different] mark” and a “difference in the trade dress”; noting
“[o]ne who adopts the mark of another for similar goods acts at his own peril and any doubt
concerning the similarity of the marks must be resolved against him”); cf. Hormel Foods Corp. v.
Jim Henson Prods., Inc., 73 F.3d 497, 504 (2d Cir. 1996) (“[A]lthough the two marks [SPAM and
Spa’am] are superficially similar, in all likelihood the parodic context in which the name ‘Spa’am’
appears [in a Muppets film] will distinguish the marks in the consumer’s mind.”).
Third, the proximity factor decisively favor plaintiff. Plaintiff has adequately pleaded that
its and defendant’s platforms serve the same market, as each provides an “online marketplace” for
“marketing, advertising, and selling goods and services.” Compl. ¶¶ 8, 11, 19. The fact that the
parties serve the same market also renders the fourth, “bridging-the-gap factor irrelevant.” Car-

Freshner, 980 F.3d at 332.
The remaining factors are neutral or favor defendant but are not sufficient to defeat
plaintiff’s claim at the motion-to-dismiss stage. See Bath & Body Works Brand Mgmt., Inc. v.
Summit Ent., LLC, 7 F. Supp. 3d 385, 399 (S.D.N.Y. 2014) (“[S]trength, similarity, and proximity
are generally the three most important Polaroid factors.” (citing Mobil Oil Corp. v. Pegasus Petrol.
Corp., 818 F.2d 254, 258 (2d Cir. 1987))). Plaintiff fails to plausibly allege actual confusion,
because the complaint contains at most conclusory allegations on this point, Compl. ¶¶ 25, 58; see
also id. ¶¶ 40–41, 50, so this factor favors defendant, but an absence of actual consumer confusion
alone cannot defeat plaintiff’s claim, see, e.g., Car-Freshner Corp., 980 F.3d at 332; Guthrie
Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 45 (2d Cir. 2016).

The remaining factors are neutral at this stage. Bad faith “is a heavily fact-intensive inquiry
that requires investigating the defendant's state of mind and actions before referencing an asserted
mark.” Portkey Techs. Pte Ltd., 2024 WL 3487735, at *6. The complaint’s allegations of bad
faith largely consist of allegations of similarity, coupled with the allegation that defendant began
its alleged infringement about two years after USPTO issued plaintiff’s word mark, see Compl.
¶ 11. While similarity alone does not establish bad faith, JTH Tax LLC v. AMC Networks Inc., 694
F. Supp. 3d 315, 339 (S.D.N.Y. 2023), “[b]ad faith may be inferred from the junior user’s actual
or constructive knowledge of the senior user’s mark” in some cases, depending on the context,
Star Indus., 412 F.3d at 389; see Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 397 (2d Cir.
1995) (“Prior knowledge of a senior user’s trade mark does not necessarily give rise to an inference
of bad faith.”). Here, while the allegations supporting bad faith are limited, the fact that the parties
provide the same service, drawing all reasonable inferences in plaintiff’s favor, renders this factor
neutral at this stage. See Kelly-Brown, 717 F.3d at 313.

In addition, the respective-quality factor is neutral at this stage. Plaintiff has pleaded facts
regarding the relative popularity of the parties’ competing platforms, compare Compl. ¶ 8, with id.
¶ 17, but not the relative quality, see Star Indus., 412 F.3d at 389 (“[A]bsent factual findings or
evidence one way or the other, this factor is at most evenly balanced.”).
Finally, the sophistication factor is neutral for purposes of defendant’s motion to dismiss.
The complaint does not “indicate whether consumers in the relevant market are particularly
sophisticated or susceptible to confusion.” Portkey Techs., 2024 WL 3487735, at *7; see JTH Tax
LLC, 694 F. Supp. 3d at 340 (“At the motion to dismiss stage, the Court looks to the allegations in
the Complaint, and reserves questions of fact for summary judgment. Because the Complaint does
not allege facts regarding consumer sophistication, the Court finds this factor to be neutral.”

(alterations, brackets, and citation omitted)).
Taking these factors in combination, with nothing more than the complaint as guidance,
enough factors weigh in favor of likelihood of confusion to survive dismissal. See Pirone, 894
F.2d at 584.
Defendant nevertheless implies that plaintiff fails to state a claim by not alleging that
defendant used plaintiff’s specific mark. See Def.’s Mem. in Supp. 13–14; Def.’s Reply 4–5
(suggesting that plaintiff claims protection in the word “offer” given that is the extent to which
“Offeria” overlaps with “OfferUp”). But marks need only “closely resemble[]” each other to
implicate Section 1125(a). B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 144 (2015)
(stating that “[t]he owner of a mark, whether registered or not, can bring suit in federal court if
another is using a mark that too closely resembles the plaintiff’s” (citing Section 1125(a))). That
close resemblance is plaintiff’s theory of the case. See Compl. ¶ 20 (“Defendant’s OFFERIA Mark
is highly similar in appearance, in sound, and in commercial impression to Plaintiff’s OFFERUP

trademark.”).
Plaintiff’s federal-law claims alleging trademark infringement and unfair competition
therefore survive defendant’s motion to dismiss.
IV. Plaintiff’s State-Law Claims Survive for the Same Reasons.
Defendant’s arguments are equally unpersuasive when aimed at plaintiff’s state-law
claims.
First, neither the facts in the complaint nor the supplemental material that defendant asserts
can be judicially noticed establishes that plaintiff’s state-law claims are untimely, regardless of
whether California’s four-year statute of limitations or New York’s six-year statute of limitations
applies. See supra pp. **–**.

Second, defendant is not entitled to the dismissal of plaintiff’s claims of trademark
infringement and unfair competition under either California or New York law. The elements of a
common-law unfair-competition claim in both states are “substantially congruent” to those of an
unfair-competition claim under the Lanham Act. Cleary v. News Corp., 30 F.3d 1255, 1262–63
(9th Cir. 1994) (California law) (citation omitted); accord No Doubt v. Activision Publ’g, Inc., 192
Cal. App. 4th 1018, 1038–39 (2011); see also TechnoMarine SA v. Jacob Time, Inc., No. 12-CV-
790 (KBF), 2012 WL 2497276, at *5 (S.D.N.Y. June 22, 2012) (“[T]he standard for trademark
infringement and unfair competition under the Lanham Act is virtually identical to that under New
York common law, except that the latter requires an additional showing of bad faith.”). And the
“ultimate test” for the likelihood of confusion “is exactly the same” whether the claim is for unfair
competition or trademark infringement. Century 21 Real Est. Corp. v. Sandlin, 846 F.2d 1175,
1178 (9th Cir. 1988) (citing New W. Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1201 (9th Cir.
1979)); accord Easy Spirit, LLC v. Skechers U.S.A., Inc., 515 F. Supp. 3d 47, 70 (S.D.N.Y. 2021);
VOX Amplification Ltd. v. Meussdorffer, 50 F. Supp. 3d 355, 366 (E.D.N.Y. 2014). Accordingly,

for the same reasons discussed supra pp. **–**, plaintiff’s state-law claims survive defendant’s
motion to dismiss. See, e.g., Roblox Corp. v. WowWee Grp. Ltd., 660 F. Supp. 3d 880, 894 (N.D.
Cal. 2023) (“For the same reason the motion to dismiss is denied with respect to the Lanham Act
claims, it is denied with respect to the [California] state law claims.”); Canon U.S.A., Inc. v. F &
E Trading LLC, No. 15-CV-6015 (DRH) (AYS), 2017 WL 112515, at *5 (E.D.N.Y. Jan. 11, 2017)
(denying motion to dismiss as to New York common-law claim for unfair competition because
“adequately pled sufficient facts to state a plausible claim . . . for trademark infringement and
unfair competition under the Lanham Act”).
CONCLUSION
For the reasons explained above, defendant’s motion to dismiss for failure to state a claim

is denied.
SO ORDERED.
Dated: September 30, 2024 /s/ Rachel Kovner
Brooklyn, New York RACHEL P. KOVNER
United States District Judge

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10659639. Public record. Not legal advice.