IP Law Daily MAN WITH A VAN mark owner defeats rival’s counterclaims via ‘unlawful use’ doctrine
Friday, November 20, 2020

MAN WITH A VAN mark owner defeats rival’s counterclaims via ‘unlawful use’ doctrine

By Todd Fanter, J.D.

Proprietor of The Original Man with a Van, LLC, admitted that she lacked a license to perform interstate moving services, she lacked certification to transport household goods, and failed to pay taxes associated with her business.

In a dispute between competing moving services providers NYcityVAN, LLC, and Mujaji Shakhete Thomas over ownership of the trademark MAN WITH A VAN, NYcityVan has been granted judgment on the pleadings by the federal district court in Brooklyn on Thomas’s counterclaims against NYcityVan’s trademark infringement claims, based on Thomas’s use of the mark in connection with an unlawful business. The court held that persuasive authority and sound policy arguments supported applying the Trademark Trial and Appeal Board’s "unlawful use doctrine" in federal court. NYcityVAN was found to have adequately shown that Thomas’s use of the mark was materially unlawful (NYcityVAN, LLC v. Thomas, November 19, 2020, Block, F.).

NYcityVAN asked the court to enjoin Thomas’s use of its federally registered MAN WITH A VAN mark to promote her allegedly illegal moving business, The Original Man with a Van, LLC, and to award damages for infringement. In response, Thomas asserted a common law right to the mark based on prior use and requested the court to cancel NYcityVAN’s registered trademark. NYcityVAN moved for judgment on the pleadings to dismiss Thomas’s counterclaims. The motion urged the court to adopt the Trademark Trial and Appeal Board’s "unlawful use doctrine" and hold that Thomas’s failure to comply with various laws and regulations prevented her from claiming trademark priority.

NYcityVAN was a New York limited liability company that offered moving services. It initially registered with the New York Department of State in October of 2011 but offered services before that date. Thomas was the sole proprietor of The Original Man with a Van, LLC, a New York limited liability company which registered with the New York Department of State in August of 2018 but has offered moving services since 2002.

In December of 2014, NYcityVAN applied to register the trademark MAN WITH A VAN with the USPTO, claiming a "first-use" date of January 1, 2010. No opposition was filed, and the USPTO approved the application in July 2015. The mark was entered into the Principal Register in July of that year.

In September 2016, Thomas petitioned the TTAB for the cancellation of NYcityVAN’s mark, arguing that she had used the mark since 2002. On November 21, 2018, NYcityVAN filed this action. Thomas filed her cancellation counterclaim two months later. The TTAB suspended its administrative proceedings pending a final resolution of this action.

In the district court suit, NYcityVAN relied on the unlawful use doctrine to argue that Thomas’s cancellation claim must be dismissed in light of her "per se" violation of, among other things, 49 U.S.C. § 31334, 49 U.S.C. § 13902, various regulatory provisions enforced by the Federal Motor Carrier Safety Administration, the New York State Transportation Law, and federal tax laws. In support of these allegations, NYcityVAN cited Thomas’s sworn statements in response to interrogatories propounded during a 2016 cancellation proceeding. It also cited online U.S. Department of Transportation (DOT) records, which showed that, as of February 11, 2019, The Original Man with a Van, LLC, was not an authorized motor carrier and did not carry insurance.

Thomas’s counsel conceded at oral argument that his client had operated an unlicensed moving business between 2002 and 2018. The Original Man with a Van (1) operated without a DOT number in violation of 49 U.S.C. § 31134; (2) failed to register in the manner described in 49 U.S.C. § 13902; and (3) failed to obtain a New York State certificate of authority to transport household goods as required by Section 191 of the New York State Transportation Law. These per se violations of federal law established the first element of the unlawful use defense, leaving only the issue of materiality before the court.

The court found that although there may be cases in which a party’s efforts to correct a violation reduce its "gravity and significance," a violation does not become immaterial merely because it can be corrected. Rather, to the extent that correctability is relevant, the proper inquiry was whether the party in question successfully corrected the alleged violations before the opposing party’s claimed priority date. Because Thomas conceded that she did not even try to obtain a license until 2018, eight years after NYcityVAN’s priority date, her violations were material. Additionally, the court found that Thomas’s abject failure to comply with licensing requirements intended to promote public safety is "material" even in the absence of a particularized showing of harm to the public. Lastly, the court found a sufficient "nexus" between Thomas’s failure to comply with DOT registration requirements and the use of her trademark. Due to the nexus between an unauthorized service and a mark used to promote that service, Thomas’s cancellation counterclaim was dismissed.

The court’s grant of judgment on Thomas’s cancellation counterclaim compelled a grant of judgment on her common law infringement, unfair competition, and trademark dilution counterclaims. Accordingly, the court applied the "general principle" that the use of a mark in commerce only creates trademark rights with this use is lawful to this case and held that Thomas’s unlawful use of the MAN WITH A VAN mark did not give rise to a "valid and protectable mark." Without the "valid and protectable mark," Thomas’s remaining counterclaims had no basis. The court granted NYcityVAN’s Motion for Judgment on the Pleadings to dismiss Thomas’s counterclaims.

This case is No. 1:18-cv-06692-FB-PK.

Attorneys: Scott L. Baker (Law Offices Of Scott L. Baker) for NYcityVAN, LLC d/b/a Man With A Van. Laurence Singer (Laurence Singer, Attorney at Law) for Mujaji Thomas a/k/a Mujaji Shakhete Thomas a/k/a Mujaji Tokunbo and The Original Man With A Van.

Companies: NYcityVAN, LLC d/b/a Man With A Van; The Original Man With A Van

MainStory: TopStory Trademark NewYorkNews GCNNews

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