At Verna Law, we prefer our clients to register their trademarks federally.  Why?  Many companies, especially those operating solely on a local level, might not see the need for federal trademark registration. These businesses often rely on state trademark laws and common law protections. However, in today’s digital age, even the smallest local businesses are often pushed into the national and international marketplace through their online presence. On the Internet, common law protections may not be enough to safeguard a brand from predatory competitors and cybersquatters who might try to extort payment in exchange for releasing a domain name that a local company neglected to register.

One of the most compelling reasons to file for federal trademark registration is to secure maximum protection for a domain name. By federally registering a mark, the owner receives preferential treatment in any domain name disputes brought before the Internet Corporation for Assigned Names and Numbers (ICANN). This registration not only protects your brand from misuse by others but also helps ensure your ability to use your brand name as a domain over those who might exploit it unscrupulously.

Ultimately, the most crucial reason to register a mark with the United States Patent and Trademark Office (USPTO) is to inform both consumers and potential competitors that your mark is federally protected. Once registered, you can use the registered trademark symbol (®) to indicate that your mark is officially recognized. This warns potential competitors that if they infringe on your mark, you have the right to file a federal trademark infringement action and seek remedies for the infringement. These remedies can include the infringer’s profits, other damages, and in some cases, even tripled damages and attorney fees. Such enhanced remedies are typically not available for unregistered, common law trademarks.

Considering the relatively low cost of filing for registration compared to the extensive benefits it provides, we usually recommend federal registration for the trademarks and service marks of most businesses, enterprises, and even individuals.

Here are some cases involving New York State trademarks only.

Case Summary: Gasoline Heaven at Commack, Inc. v. Nesconset Gas Heaven, Inc.

Court: Supreme Court, Suffolk County, New York
Date: May 16, 2002
Citation: 191 Misc.2d 646, 743 N.Y.S.2d 825, 2002 N.Y. Slip Op. 22569

Background: The case involves a trademark dispute between Gasoline Heaven at Commack, Inc. (Plaintiff) and Nesconset Gas Heaven, Inc. (Defendant). The plaintiff alleged that the defendant’s use of the name “Gas Heaven” created confusion among customers and constituted trademark infringement.

Facts:

• Gasoline Heaven at Commack, Inc. operates a chain of gas stations under the name “Gasoline Heaven.”
• Nesconset Gas Heaven, Inc. opened a gas station using the name “Gas Heaven.”
• The plaintiff claimed that the defendant’s use of “Gas Heaven” was likely to confuse customers and dilute their brand’s distinctiveness.
• The plaintiff sought a preliminary injunction to prevent the defendant from using the name “Gas Heaven.”

Procedural History: The plaintiff filed a motion for a preliminary injunction in the Supreme Court, Suffolk County, New York.

Issue: The primary issue before the court was whether the plaintiff was entitled to a preliminary injunction to stop the defendant from using the name “Gas Heaven,” based on the likelihood of consumer confusion and trademark dilution.

Holding: The court granted the plaintiff’s motion for a preliminary injunction, preventing Nesconset Gas Heaven, Inc. from using the name “Gas Heaven.”

Rationale:

• The court found that the plaintiff had established a likelihood of success on the merits of their trademark infringement claim.
• There was sufficient evidence to suggest that consumers were likely to be confused by the similarity between “Gasoline Heaven” and “Gas Heaven.”
• The court noted that the plaintiff’s brand had acquired distinctiveness and goodwill, which could be diluted by the defendant’s use of a similar name.
• The balance of equities tipped in favor of the plaintiff, as the potential harm to the plaintiff’s brand outweighed any inconvenience the defendant might face by changing their name.

Conclusion: The court’s decision to grant a preliminary injunction underscored the importance of protecting established trademarks from infringement and dilution. By preventing Nesconset Gas Heaven, Inc. from using the name “Gas Heaven,” the court aimed to preserve the distinctiveness and consumer recognition of Gasoline Heaven at Commack, Inc.’s brand. This case highlights the legal recourse available to businesses facing trademark infringement and the courts’ role in upholding trademark protections.

Case Summary: Fireman’s Ass’n of State of New York v. French American School of New York

Court: Supreme Court, Appellate Division, Third Department, New York
Date: June 7, 2007
Citation: 41 A.D.3d 925, 839 N.Y.S.2d 238, 2007 N.Y. Slip Op. 04745
Judge: CARDONA, P.J.

Background

The Fireman’s Association of the State of New York (Petitioner) is a not-for-profit organization established in the 1870s, representing 43,000 volunteer firefighters. It disseminates information about firefighting and fire safety and operates a home for retired firefighters, a firefighting museum, and sells related merchandise. Petitioner adopted the acronym “FASNY” in 1889 and uses it widely on various platforms.

The French American School of New York (Respondent) is a private, not-for-profit educational organization founded in 1980, serving predominantly French expatriate children at three Westchester County locations. The Respondent has used the acronym “FASNY” informally for 20 years and formally since 1997.

In 2005, the Petitioner discovered that the Respondent was using the “FASNY” acronym and demanded that the Respondent cease its use, claiming trademark infringement. The Respondent did not comply, leading the Petitioner to file a lawsuit seeking injunctive relief and alleging trademark infringement, deceptive trade practices, and dilution of its mark.

Trial Court’s Decision

The Supreme Court (McNamara, J.):

• Denied relief under General Business Law § 133 and the trademark infringement claims, citing no public deception or likelihood of confusion.
• Granted a preliminary injunction under General Business Law § 360-l, finding that the Respondent’s use diluted the distinctive quality of the Petitioner’s mark.

Issues on Appeal

The Respondent appealed, arguing:

1. The Petitioner did not meet the requirements for a preliminary injunction under General Business Law § 360-l.
2. The entire petition should be dismissed.

Appellate Division Decision

The Appellate Division modified the lower court’s decision:

• General Business Law § 133 and Trademark Infringement Claims: Affirmed dismissal. The Petitioner did not demonstrate intent to deceive or likelihood of public confusion.
• General Business Law § 360-l Claim: Vacated the preliminary injunction. The Petitioner failed to show irreparable injury, given the coexistence of both parties’ use of the “FASNY” mark for 20 years without documented harm. The court also considered the adverse impact on the Respondent if forced to abandon the mark.

The Appellate Division held that the Petitioner still had a valid cause of action under General Business Law § 360-l, recognizing the low threshold to survive a motion to dismiss. The Petitioner had alleged facts suggesting that the Respondent’s use could dilute the distinctive quality of its mark.

Conclusion

The order was modified to dismiss the General Business Law § 133 and trademark infringement claims and to vacate the preliminary injunction. The case was remanded for further proceedings on the General Business Law § 360-l claim.

Judges

PETERS, SPAIN, CARPINELLO, and ROSE, JJ., concurred.

Order: Modified and affirmed as modified, with costs to the Respondent.