Zdenek Marek v. Old Navy (Apparel) Inc., 03 Civ. 4876(JES).

• Court: United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
• Citation: 348 F.Supp.2d 275
• Docket Number: No. 03 Civ. 4876(JES).,No. 04 Civ. 2356(JES).,03 Civ. 4876(JES).,04 Civ. 2356(JES).
• Parties: ZDENEK MAREK D/B/A ZINC, Plaintiff pro se, v. OLD NAVY (APPAREL) INC. and Old Navy Inc., Defendants. Zdenek Marek d/b/a Zinc, Plaintiff pro se, v. Old Navy (Apparel) Inc. and Old Navy Inc., Defendants.
• Decision Date: 15 December 2004

348 F.Supp.2d 275 ZDENEK MAREK D/B/A ZINC, Plaintiff pro se,
v.
OLD NAVY (APPAREL) INC. and Old Navy Inc., Defendants.
Zdenek Marek d/b/a Zinc, Plaintiff pro se,
v.
Old Navy (Apparel) Inc. and Old Navy Inc., Defendants. No. 03 Civ. 4876(JES). No. 04 Civ. 2356(JES). United States District Court, S.D. New York. December 15, 2004.

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Zdenek Marek, d/b/a Zinc, New York City, Plaintiff pro se.

Fross Zelnick Lehrman & Zissu, P.C. (Barbara A. Salomon, Jessica Mann, Zoe Hilden, of counsel), New York City, for Defendants.

MEMORANDUM OPINION AND ORDER

SPRIZZO, District Judge.

Plaintiff pro se Zdenek Marek ("plaintiff") brings the above-captioned actions against defendants Old Navy (Apparel) Inc. and Old Navy Inc. ("defendants") for tortious interference with prospective business relationship, injurious falsehood, and libel per se. Defendants move pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure to dismiss both actions due to plaintiff's failure to state a claim. For the reasons that follow, defendants' motions to dismiss are granted.

BACKGROUND

Plaintiff is in the business of manufacturing and selling clothes in New York City. See Amended Complaint for Libel Per Se, dated May 22, 2004 (the "2004 Complaint" or "2004 Compl.") ¶ 7. Some time in 1998, plaintiff developed the trademark OLD ARMY, which he began using in manufacturing and advertising. See Amended Complaint, dated September 27, 2003 (the "2003 Complaint" or "2003 Compl.") ¶ 3. Plaintiff registered his mark OLD ARMY with the New York State Department of State, and also registered OLD ARMY as a business with the City of New York. See 2003 Compl. ¶ 4.

Plaintiff received his first order for OLD ARMY merchandise on September 17, 1998. See 2003 Compl. ¶ 6; 2004 Compl. ¶ 10. In addition to pursuing customers interested in purchasing OLD ARMY merchandise, plaintiff also concentrated his efforts on licensing and even selling the OLD ARMY mark. See 2003 Compl. ¶¶ 9-12. To this end, plaintiff placed several advertisements in trade newspapers and, as a result, received numerous inquiries concerning the licensing of the OLD ARMY mark. See 2003 Compl. ¶ 11. In the 2003 Complaint plaintiff identifies by name three parties that were seriously considering licensing the OLD ARMY mark. Id. ¶ 12.¹ Furthermore, plaintiff

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alleges that two of the interested prospective licensees orally agreed to enter into contracts for the licensing of the OLD ARMY mark. Id. ¶ 13. The prospective licensees informed plaintiff, however, that they would not enter into formal licensing agreements with him unless the OLD ARMY mark was federally registered. Id. ¶ 16.

On March 8, 1999, plaintiff applied to register the OLD ARMY mark with the United States Patent and Trademark Office (the "PTO") for various categories of clothing, footwear, and headgear. See 2003 Compl. ¶ 17, Exhibit ("Exh.") D; 2004 Compl. ¶ 12, Exh. C. In accordance with its registration procedures, the PTO published the OLD ARMY mark for opposition in the PTO's Official Gazette on January 4, 2000. See 2003 Compl., Exh. E. It was at this point that defendants in these actions first mounted their challenge to the registration of the OLD ARMY mark.

Defendant Old Navy (Apparel) Inc. is the owner of the federally registered trademark OLD NAVY, which it licenses to defendant Old Navy Inc. for use in connection with retail stores, clothing, accessories, and other products. See 2003 Compl., Exh. B ¶¶ 1-2; 2004 Compl., Exh. B ¶¶ 1-2. On May 1, 2000, after applying for and obtaining three successive extensions of time, defendants filed a Notice of Opposition with the PTO's Trademark Trial and Appeal Board (the "Board"), opposing registration of the OLD ARMY mark on the grounds that there was a likelihood of confusion between the goods and services provided by defendants under the OLD NAVY mark and the goods provided by plaintiff under the OLD ARMY mark. See 2003 Compl., Exh. G. Defendants, however, failed to timely submit a brief in support of their opposition. See 2003 Compl. ¶ 31. Apparently, both the attorney and the legal assistant handling this matter before the Board left defendants' employment in early 2001, and the information concerning the deadlines set by the Board for the filing of defendants' opposition brief was inadvertently lost. See 2003 Compl., Exh. I, at 1-2. The Board eventually concluded that defendants' failure to submit a timely brief could not be excused. Defendants' opposition was dismissed by the Board with prejudice, see 2003 Compl., Exh. J; 2004 Compl., Exh. D, and plaintiff's OLD ARMY mark was registered on January 28, 2003. See 2003 Compl., Exh. K; 2004 Compl., Exh. E.

On March 26, 2003, defendants (proceeding swiftly this time) filed a Petition for Cancellation of the OLD ARMY mark pursuant to 15 U.S.C. § 1064(3) (the "Cancellation Petition") on the grounds that the mark's registration was fraudulently obtained. See 2003 Compl., Exh. B ¶¶ 6-7; 2004 Compl., Exh. B ¶¶ 6-7. Specifically, defendants alleged in the Cancellation Petition that the statement made by plaintiff in the registration application he submitted to the PTO that the OLD ARMY mark was first used in commerce on September 17, 1998 was false because, according to defendants "there ha[d] been little or no use of the OLD ARMY mark." 2003 Compl., Exh. B ¶ 6; 2004 Compl., Exh. B ¶ 6. Defendants further contended in their Cancellation Petition that while plaintiff "purportedly began preparations to manufacture a T-shirt, ... there is no evidence that an OLD ARMY T-shirt was ever actually manufactured or sold in commerce." Id. Finally, defendants also alleged that plaintiff made no commercial use of the OLD ARMY mark "in connection with the other apparel and footwear set forth in the registration." Id. To the Court's knowledge, the cancellation proceeding commenced

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by defendants before the PTO (the "Cancellation Proceeding") is still ongoing as of this date.

On June 2, 2003, plaintiff filed a complaint against defendants in New York State Supreme Court (the "2003 Action") asserting claims for tortious interference with prospective economic advantage, libel per se, and punitive damages. Defendants removed the 2003 Action to this Court. Ruling on defendants' motion to dismiss the 2003 Action, the Court dismissed plaintiff's original complaint and granted plaintiff leave to replead. See Court's Order dated September 29, 2003. On October 17, 2003 plaintiff filed the 2003 Complaint, asserting claims for "intentional interference with prospective contractual relationships, prospective pre-contractual relationships and prospective business relationship in the alternative" and injurious falsehood. See 2003 Compl. ¶¶ 2-59, ¶¶ 60-68. While defendants' motion to dismiss the 2003 Complaint was pending before the Court, plaintiff commenced a second action against defendants in this Court, this time asserting a single claim of libel per se based on the statements made by defendants in the Cancellation Proceeding. See 2004 Compl. ¶¶ 17-25.

DISCUSSION

In considering a motion to dismiss brought pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, the Court must accept as true all factual allegations set forth in the complaint and draw all reasonable inferences in favor of the plaintiff. See Swierkiewicz v. Sorema N.A., 534 U.S. 506, 508 n. 1, 122 S.Ct. 992, 152 L.Ed.2d 1 (2002); Blue Tree Hotels Inv. (Canada), Ltd. v. Starwood Hotels & Resorts Worldwide, Inc., 369 F.3d 212, 217 (2d Cir.2004) (citing Gryl v. Shire Pharm. Group PLC, 298 F.3d 136, 140 (2d Cir. 2002)). The Court's function is "not to weigh the evidence that might be presented at a trial but merely to determine whether the complaint itself is legally sufficient." Goldman v. Belden, 754 F.2d 1059, 1067 (2d Cir.1985). The Court may not dismiss a complaint for failure to state a claim "unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957). In deciding a Rule 12(b)(6) motion the Court "may consider `any written instrument attached to [the complaint] as an exhibit or any statements or documents incorporated in it by reference.'" Yak v. Bank Brussels Lambert, 252 F.3d 127, 130 (2d Cir.2001) (alteration in original) (quoting Cortec Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 47 (2d Cir.1991)); see also Fed.R.Civ.P. 10(c) ("A copy of any written instrument which is an exhibit to a pleading is a part thereof for all purposes."). Furthermore, the Court will "read the pleadings of a pro se plaintiff liberally and interpret them `to raise the strongest arguments that they suggest,'" McPherson v. Coombe, 174 F.3d 276, 280 (2d Cir.1999) (quoting Burgos v. Hopkins, 14 F.3d 787, 790 (2d Cir.1994)), while holding them "to...