FDNY Gets Split Decision in Trademark Suit

A federal court in New York has upheld in part and denied in part a trademark infringement suit brought by the City of New York against a vendor who refused to stop selling FDNY and NYPD t-shirts and memorabilia. The city sued Blue Rage, Inc. doing business as The Cop Shop, and its owners, Salvatore and Susan Piccolo alleging they sold “a wide variety of unlicensed, infringing merchandise bearing the NYPD and FDNY Trademarks.”  

The suit was filed in 2017. According to the complaint, the city registered FDNY as a trademark on December 12, 2001, and thereafter obtained numerous other trademark registrations in the years thereafter. The city sent numerous cease and desist notices to the defendants, who continued to see unlicensed merchandise. The defendants alleged they had been using the trademarks prior to the city’s registration, and counterclaimed seeking to have the trademarks canceled.

From the city’s complaint:

• Defendants, through both its retail shop at 560 Broadway, Massapequa, New York 11758, and its online website @ www.copshopny.com, are marketing, selling and distributing a wide variety of unlicensed, infringing merchandise bearing the NYPD and FDNY Trademarks.
• Upon information and belief, Defendants possess and are manufacturing and selling these infringing and/or counterfeit products in interstate commerce to members of the general public.
• Defendants further are unlawfully using the NYPD Shield and the FDNY Shield on business cards and on the store signage of the retail shop.

As the case unfolded, the city and the defendants moved for summary judgment on several key issues. As explained by the court:

• Defendants do not dispute that the Cop Shop sells unlicensed merchandise, but contend that they “do not operate a souvenir store” and that the merchandise “was sold to members and their families of uniform services of the NYPD and FDNY to signify their affiliation with the service.”
• They contest, however, that the unlicensed merchandise “had been sold as souvenir merchandise” and that it “has been sold without the City’s consent.”
• Making a distinction between the NYPD and FDNY “marks” and “logos,” Defendants deny any use of the marks as trademarks or brands, but “admit their use of NYPD and FDNY logos for merchandise, including mugs, apparel items and greeting cards.”
• They further admit that they did not comply with the City’s demands that they stop selling merchandise with the NYPD and FDNY logos.
• In addition, they argue that they were selling goods with the NYPD and FDNY marks prior to the dates of first use in commerce set forth in the trademark registrations.
• The City [asserts]… six (6) causes of action against Defendants:
• (1) trademark infringement under Section 32 (1)(a) of the Lanham Act, 15 U.S.C. § 1114 (1)(a);
• (2) false designation of origin and/or false description or representation in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a);
• (3) trademark dilution in violation of 15 U.S.C. § 1125(c);
• (4) common law unfair competition;
• (5) trademark infringement in violation of New York General Business Law § 360-k; and
• (6) deceptive trade practices and false advertising under New York General Business Law §§ 349, 350, and 350-e.
• In their Amended Answer, Defendants raised several defenses including …
• (1) that their sale of merchandise constitutes continued use within the meaning of 15 U.S.C. § 1115(b)(5);
• (2) that they had permission from Commissioner Bratton to use the NYPD trademarks;
• (3) that registration of trademarks of an insignia of a municipality is prohibited by federal regulation;
• (4) laches due to the City’s delay in enforcement efforts;
• (5) that the City’s has “unclean hands” as the trademark registrations were fraudulently obtained and misused;
• (6) that they provide “disclaimers” as to the presence of unlicensed merchandise to preclude any likelihood of confusion; and
• (7) that the City is estopped from raising claims as waived by its prior actions.
• Defendants further asserted a single counterclaim seeking cancellation of the trademark registrations as fraudulently obtained and sought injunctive and monetary relief.
• After completion of discovery, the parties cross-moved for summary judgment.
• The City seeks summary judgment on its federal Lanham Act claims only and further seeks dismissal of Defendants’ counterclaim.
• Defendants’ motion seeks summary judgment on the federal claims in their favor.

For those interested in the nuances of trademark law, I would encourage you to download and read the entire decision. The details would be overwhelming to discuss here. However, here is the court’s summation of its ruling:

• For all the foregoing reasons, the City’s motion is:
• (1) granted as to the Lanham Act claims for trademark infringement and false designation of origin as to the NYPD Shield, NYPD Mark, and FDNY Shield as used on merchandise from Class 025/Clothing;
• (2) denied as to the remaining trademark infringement and false designation of origin claims;
• (3) denied as to the Lanham Act dilution claim; and
• (4) granted as to Defendants’ counterclaim.
• The award of damages and/or injunctive relief and attorneys’ fees is held in abeyance pending trial on the remaining claim.
• Defendants’ motion, is denied in its entirety, and any defenses not expressly decided herein are deemed abandoned.

Here is a copy of the decision:

Here is a copy of the city’s original complaint: