Now-Casting Econ. v. Econ. Alchemy
| Decision Date | 15 September 2022 |
| Docket Number | 18 Civ. 2442 (JPC) |
| Parties | NOW-CASTING ECONOMICS, LTD., Plaintiff, v. ECONOMIC ALCHEMY LLC, Defendant. |
| Court | U.S. District Court — Southern District of New York |
This case involves a dispute over trademarks. In 2016, Economic Alchemy LLC (“EA”) sent Now-Casting Economics Ltd. (“Now-Casting”) a cease-and-desist letter accusing Now Casting of infringing two of EA's registered trademarks: “NOWCAST”, Registration No. 4,341,813 and “NOW-CAST”, Registration No. 4,341,813 (the “Disputed Terms”). Now-Casting then sued EA seeking a declaration that its use of the Disputed Terms does not infringe EA's trademarks, an order directing the United States Patent and Trademark Office (“USPTO”) to cancel those trademarks, and a permanent injunction restraining EA's interference with Now Casting's use of the Disputed Terms. EA filed counterclaims alleging trademark infringement. Then, in 2020 the USPTO cancelled EA's trademark registrations on administrative grounds.
That cancellation mooted many of Now-Casting's claims. But one of its claims remains: Now-Casting's request for a declaration that its use of the Disputed Terms does not violate EA's unregistered trademark rights under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Pending before the Court are the parties' cross motions for summary judgment. Now-Casting seeks summary judgment on that remaining declaratory judgment claim and on EA's counterclaims, and EA seeks summary judgment on Now-Casting's claim. Because no evidence suggests that EA's now unregistered trademarks are protectable, the Court grants Now-Casting's motion for summary judgment and denies EA's motion for summary judgment.
Both parties also seek sanctions. Now-Casting has moved for sanctions in connection with EA's counterclaims, and EA seeks its fees in responding to that sanctions motion. EA has not, however, taken an objectively unreasonable position in filing and continuing to pursue its counterclaims, nor has Now-Casting taken such a position in seeking sanctions. The Court therefore denies Now-Casting's motion for Rule 11 sanctions and EA's request for its fees in opposing that sanctions motion.
This case involves questions about trademark infringement surrounding the Disputed Terms, “nowcast” and “now-cast.” In the economics context, “nowcast” describes a model for predicting economic conditions, like gross domestic product growth, in the present or near future. Dkt. 142 (“McMahon Declaration”) ¶ 8; Pl. Counter 56.1 Stmt. ¶ 6. Since 1996, academic papers and articles have used the Disputed Terms to describe statistical models used to estimate, predict, or analyze macroeconomic information. Dkts. 143-184 (“Grieco Declaration”) ¶ 74, Exhs. J1-J80; Pl. 56.1 Stmt. ¶ 91.
On December 8, 2010, Domenico Giannone, Jasper McMahon, Lucrezia Reichlin, and Saverio Simonelli founded a United Kingdom corporation called Now-Casting to sell economic forecasts generated by nowcasting models to asset management companies, central banks, and other entities. McMahon Declaration ¶ 5, Exh. B1.1; Pl. 56.1 Stmt. ¶ 12. Almost two months before formerly launching the company, on October 11, 2010, McMahon bought the domain name “now-casting.com” for the company. McMahon Declaration ¶ 6, Exhs. B1, B1.1; Pl. 56.1 Stmt. ¶ 12. Soon after Now-Casting's launch, on December 19, 2010, McMahon created a Wikipedia page about nowcasting in economics. McMahon Declaration ¶ 7, Exh. B2; Pl. 56.1 Stmt. ¶ 13. Around this same time, “in late 2010,” Now-Casting began using the name Now-Casting Economics Ltd. in the United Kingdom. McMahon Declaration ¶ 9; Pl. 56.1 Stmt. ¶ 15.
Then by “at least as early as February 22, 2011,” Now-Casting began “marketing its nowcasting services to potential customers in the United States.” McMahon Declaration ¶ 9, Exh. B3; Pl. 56.1 Stmt. ¶ 15. This included “using the name Now-Casting Economics Ltd. and its logo . . ., which incorporates the word Now-Casting, as well as the” Disputed Terms. McMahon Declaration ¶ 9, Exh. B3; Pl. 56.1 Stmt. ¶ 15. These U.S.-based marketing efforts were not a one-off: Now-Casting marketed to at least forty-two U.S. customers in 2011 using its name and logo. McMahon Declaration ¶ 10, Exhs. B3-B81; Pl. 56.1 Stmt. ¶ 16. And at least twice in 2011, Reichlin and McMahon, Now-Casting's CEO, traveled to the United States to advertise to potential clients. McMahon Declaration ¶ 11; Exhs. B3, B76; Pl. 56.1 Stmt. ¶ 11. These efforts paid off. In 2011, three U.S. companies paid to subscribe to Now-Casting's services. McMahon Declaration ¶ 12; Pl. 56.1 Stmt. ¶ 17. Besides the company's marketing efforts, Now-Casting used the Disputed Terms in subscriber emails and on the company website. McMahon Declaration ¶¶ 1314; Exhs. B26, B32, B33, B39; Pl. 56.1 Stmt. ¶¶ 18-19.
EA is a New York Corporation founded by economist Giselle Guzman. Grieco Declaration, Exh. D (“Guzman Dep. Tr.”) at 30:6-11; Pl. 56.1 Stmt. ¶ 22. It offers “services in the nature of economic information, consultancy, and software-as-a-service.” Dkt. 193 (“Guzman Declaration”) ¶ 2; Pl. 56.1 Stmt. ¶¶ 21. EA's customers mainly consist of financial companies, real estate companies, colleges, and corporations. Grieco Declaration ¶ 13, Exhs. F1-1, F1-2; Pl. 56.1 Stmt. ¶ 28.
On December 16, 2011, EA bought the domain name “nowcast-economics.com.” Grieco Declaration ¶ 9, Exh. C1-1; Pl. 56.1 Stmt. ¶ 24. Then on May 28, 2013, EA obtained U.S. trademark registrations for the marks “NOWCAST”, Registration No. 4341813, and “NOWCAST”, Registration No. 4341811, i.e., the Disputed Terms, relating to market analysis services. Grieco Declaration ¶ 21, Exhs. W1-W2; Guzman Declaration ¶¶ 3-4; Pl. 56.1 Stmt. ¶ 36. Those registrations both claimed November 27, 2011 as their first use date and January 25, 2012 as their first use in commerce date. Grieco Declaration ¶ 23, Exhs. W1 at 3, W2 at 3; Pl. 56.1 Stmt. ¶ 38.
Despite these claimed first use dates in the registrations, it remains unclear when EA began using the Disputed Terms. At her deposition, Guzman testified that EA began using the Disputed Terms at some point in “late 2011.” Guzman Dep. Tr. at 43:22-44:5; Pl. 56.1 Stmt. ¶ 23. In Guzman's Declaration, she claims that EA “produced numerous emails” showing that EA contacted “potential customers and investors about EA's services” before August 29, 2012. Guzman Declaration ¶ 30. Yet EA has not cited, let alone produced, any evidence of communications in late 2011.[2]
It was not until 2015 that EA announced the “launch of Now-Cast” in a press release. Grieco Declaration ¶ 12, Exh. G8; Pl. 56.1 Stmt. ¶ 28. The press release described Now-Cast as “a fully-automated economic prediction platform that analyzes Big Data to monitor real-time events across the world and instantaneously calculate their economic impact on global and local economies on a live minute-by-minute basis.” Grieco Declaration ¶ 12, Exh. G8 at 1; Pl. 56.1 Stmt. ¶ 27. Then on February 19, 2015, EA applied to register the trademark NOWCAST for other EA services including financial and investment consulting and analysis, and the storage of economic and financial data. Guzman Declaration. ¶ 6; Grieco Declaration ¶ 21, Exh. W3; Pl. 56.1 Stmt. ¶ 36.
After Now-Casting asked the Trademark Trial and Appeal Board (“TTAB”) on November 29, 2016 for an extension of time to oppose EA's pending application to register NOWCAST, EA sent Now-Casting a cease-and-desist letter. Grieco Declaration ¶¶ 38-39, Exhs. U1, W3; Pl. 56.1 Stmt. ¶¶ 54-55. That letter claimed that Now-Casting was infringing EA's trademark rights in the Disputed Terms by using the terms “now-cast,” “now-casts,” and “now-casting.” Grieco Declaration ¶ 39, Exh. U1 at 2; Pl. 56.1 Stmt. ¶ 55. Now-Casting's counsel responded to EA on December 23, 2016. Grieco Declaration ¶ 40, Exh. U2; Pl. 56.1 Stmt. ¶ 55. The response maintained that Now-Casting had used the disputed terms before EA was even formed and that the claimed terms were generic. Grieco Declaration ¶ 40, Exh. U2 at 2; Pl. 56.1 Stmt. ¶ 55. EA never replied to Now-Casting's letter. Grieco Declaration ¶ 41; Pl. 56.1 Stmt. ¶ 56.
On March 1, 2017, Now-Casting petitioned the TTAB to oppose EA's “application to register its new NOWCAST mark (Opposition No. 91233160)” as well as “to cancel [EA's] NOWCAST mark (Cancellation No. 92065549).” Guzman Declaration ¶ 7; see Grieco Declaration ¶ 42, Exhs. V1-V2; Pl. 56.1 Stmt. ¶ 57.[3] On October 11, 2017, Now-Casting petitioned to cancel the NOW-CAST mark. Guzman Declaration ¶ 8; Grieco Declaration, Exh. V5. On February 22, 2018, the TTAB dismissed Now-Casting's petition for cancellation of EA's Now-Cast mark because Now-Casting did not set forth sufficient facts to plead cancellation based on genericness or descriptiveness. Guzman Declaration ¶ 13. In response, on March 13, 2018, Now-Casting filed an amended petition to cancel the NOW-CAST mark. Id. ¶ 17.
Six days later, on March 19, 2018, Now-Casting commenced this action. Dkt. 1 (“Compl”). In its first cause of action, Now-Casting seeks a declaratory judgment that using the Disputed Terms does not violate EA's rights under 15 U.S.C. §§ 1114 or 1125. Id. ¶¶ 64-66. In its second and third causes of action, Now-Casting asks the Court to direct the USPTO to cancel EA's trademark registrations for the Disputed Terms under 15 U.S.C. § 1119. Id. ¶¶ 67-76. In its fourth cause of action, Now-Casting requests a permanent injunction restraining EA from interfering with Now-Casting's use of the Disputed Terms and other related terms. Id. ¶¶ 77-81.
On June 22, 2018, EA filed its...
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