The Spiritual Mediums, the Websites and Trademark Infringement

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On January 22, 2013, James Van Praagh (plaintiff) filed a trademark infringement action against his sister, Lynn Gratton (defendant). Van Praagh v. Gratton, 2014 WL 292460 (U.S. District Court for the Eastern District of New York 2014). He accused her of  “(1) trademark infringement in violation of the Lanham Act, 15 U.S. Code § 1114(1)(a); (2) false designation of origin in violation of the Lanham Act, 15 U.S. Code § 1125(a); (3) trademark dilution in violation of the Lanham Act, 15 U .S. Code § 1125(c)”.  Van Praagh v. Gratton, supra.  

If you are interested, you can find a news story about the suit here.  And Wikipedia has a good overview of trademark law.  

Gratton responded by filing a motion under Rule 12(b)(6) of the Federal Rules of Civil Procedure, which allows a defendant to ask the court to dismiss some or all of the plaintiff’s claims because they are legally insufficient, i.e., fail to state a claim upon which relief can be granted. Van Praagh v. Gratton, supra.  In ruling on a Rule 12(b)(6) motion, a judge does not weigh the facts alleged by both sides; instead, the judge’s task is to note the facts in the case and determine whether, based on those facts, the plaintiff has adequately alleged certain causes of action, such as the ones noted above.

The judge began the process of ruling on Gratton’s motion to dismiss by noting that “[i]t is well-established that a complaint should be dismissed under Rule 12(b)(6) only if it does not contain enough allegations of fact to state a claim for relief that is `plausible on its face.’” Van Praagh v. Gratton, supra (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007)).  And he outlined the facts from which the suit arose, noting that

[Van Praagh], a resident of California, and [Gratton], a resident of New York, are siblings. . . . While [they] at one time shared the surname `Van Praagh,’ [Gratton] ceased using `Van Praagh’ as her last name when she married on August 28, 1970, at which time she assumed the surname `Gratton’. . . .  instead. . . .

[Van Praagh] purports that for the last twenty years, he has provided spiritualmedium services in connection with his name and trademark `James Van Praagh’ (the `James Van Praagh Trademark’). . . . [W]hile using the James Van Praagh Trademark, he has appeared on syndicated television shows; presented at large conferences and retreats; worked with people throughout the United States and internationally; authored books; maintained a website and online community; and offered seminars. . . . 

[Van Praagh] `has developed an enormous following and is one of the most recognized spiritual mediums in the world.’ . . . He claims that by using the James Van Praagh Trademark in association with his spiritual medium services, books, website, shows and seminars, he `has built valuable good will in his name.’

Van Praagh v. Gratton, supra.  The judge then outlined how this suit arose:

[Van Praagh] alleges that in 2010, [Gratton] began providing her own spiritual medium services in the State of New York using the surname `Van Praagh,’ which he also suggests is trademarked by him (the `Van Praagh Trademark’). . . . Upon learning [Gratton] was using the alleged Van Praagh Trademark, [Van Praagh] contacted [her] and demanded she stop using the name. . . . However, [Gratton] ignored those demands. . . .

In addition, [Van Praagh] claims [Gratton] has used the Van Praagh Trademark while offering her spiritual medium services at various venues throughout the United States and on her websites, Facebook Page, Twitter account and YouTube channel. . . . [He] appears to suggest that his sister has marketed her spiritual medium services using the trademarks `Lynn Van Praagh’ and `Lynn Van Praagh–Gratton,’ and that the use of these names overlap with his James Van Praagh Trademark and Van Praagh Trademark. . . .

With respect to [Gratton’s] websites, [he] alleges that [she] has registered the domain names `www.lynnievanpraagh.com’ and `www.lynnievanpraaghgratton.com.’ . . . According to one of these websites, . . . [Gratton] holds herself out as `a Spiritual Medium with the gift of communicating on the other side with those who have passed’ and she `comes from a long line of highly gifted psychics and mediums, it's been her family's gift for many generations.’ . . . Further, the `about’ page of this website includes claims [Gratton’s] `mother had the gift as do some of her siblings.’

When [Van Praagh] discovered [Gratton], without authorization, was continuing to use and expanding upon her use of the Van Praagh Trademark, he again . . . demanded she cease using the Van Praagh Trademark. . . . [She] declined to do so. . . .

Approximately two years after [Gratton] began using the Van Praagh name in association with her own spiritual medium services, on October 30, 2012, [she] registered the James Van Praagh Trademark with the United States Patent and Trademark Office. . . . The federal trademark registration numbers for the James Van Praagh Trademark are U.S. Reg. Nos. 4,233,849 and 4,233,848. Prior to October 30, 2012, the James Van Praagh Trademark was unregistered. It also appears that the Van Praagh Trademark was and remains unregistered.

Van Praagh v. Gratton, supra.    

The judge began his analysis of the legal sufficiency of Van Praagh’s causes of action with his claims for trademark infringement under 15 U.S. Code § 1114(1)(a) and false designation of origin under 15 U.S. Code § 1125(a).  Van Praagh v. Gratton, supra.  He noted that to prevail on a trademark infringement claim, a plaintiff must demonstrate

(1) ‘that it has a valid mark entitled to protection,’ and (2) ‘that the defendant's use of that mark is likely to cause confusion.’ Juicy Couture v. Bella Intern. Ltd., 930 F.Supp.2d, 489 (U.S. District Court for the Southern District of New York 2013) (quoting Time, Inc. v. Petersen Publ'g Co. LLC, 173 F.3d 113 (U.S. Court of Appeals forthe 2d Circuit 1999)).

With respect to determining whether the use of a mark by the defendant will cause confusion,

`[c]ourts look to the following factors . . .: (1) the strength of the plaintiff's mark; (2) the similarity of the marks; (3) the competitive proximity of the products in the marketplace; (4) the likelihood that the senior user will `bridge the gap’ by moving into the junior's product market; (5) evidence of actual confusion; (6) the junior user's bad faith in adopting the mark; (7) the respective quality of the products; and (8) the sophistication of the consumers in the relevant market.’

Juicy Couture v. Bella Intern. Ltd., supra. . . .

Van Praagh v. Gratton, supra.    

The judge then noted that 15 U.S. Code § 1125(a), which creates the cause of action for false designation of origin, the statute prohibits any misrepresentation likely to cause

`confusion about the source of a product, in particularly the use by any person of [ ] any . . . name . . . likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association . . . with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.’ L'Oreal USA, Inc. v. Trend Beauty Corp., 2013 WL 4400532 (U.S. District Court for the Southern District of New York 2013) (quoting 15 U. Code § 1125(a). . . . `[T]he standards for false designation of origin claims under . . . (15 U.S.C. § 1125) are the same as for trademark infringement claims under . . . (15 U.S.C. § 1114).’ Twentieth Century Fox Film Corp. v. Marvel Enterprises, Inc., 220 F.Supp.2d 289 (U.S. District Court for the Eastern District of New York 2002). . . .

 

Van Praagh v. Gratton, supra.    

Finally, he pointed out that while 15 U.S. Code § 1114 protects registered trademarks, 15 U.S. Code § 1125(a) “`is a broad federal unfair competition provision which protects unregistered trademarks[.]’” Van Praagh v. Gratton, supra (quoting L'Oreal USA, Inc. v. Trend Beauty Corp., supra). To qualify for trademark registration, a mark must be

`either [ ](1) “inherently distinctive,” where its intrinsic nature serves to identify its particular source; or (2) distinctive by virtue of having acquired a ‘secondary meaning’ in the minds of consumers.’ Lopez v. Gap, Inc., 883 F.Supp.2d 400 (U.S. District Court for the Southern District of New York 2012) (quoting Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F.Supp.2d 442 (U.S.District Court for the Southern District of New York 2008)). 

It `must also be “used in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark”’ and `must have been used in commerce, not merely adopted by the plaintiff.’ Lopez v. Gap, Inc., supra (quoting Gameologist Grp., LLC v. Scientific Games Int'l, Inc., 838 F. Supp. 2d 141 (U.S.District Court for the Southern District of New York 2011).

Van Praagh v. Gratton, supra.    

The judge then applied these standards to this case, noting that Van Praagh claimed he

has a registered trademark for his name, `James Van Praagh,’ which he has used in connection with his spiritual medium services for approximately twenty years. Thus, the James Van Praagh Trademark would constitute a valid mark for purposes of a trademark infringement claim pursuant to the Lanham Act, 15 U.S. Code § 1114(1)(a).

[He] also claims to have an unregistered trademark for his surname alone, `Van Praagh.’ When a trademark involves a personal name, courts have held:

`Personal names used as trademarks are generally regarded as descriptive terms and are thus protected only if, through usage, they have acquired distinctiveness and secondary meaning. Once an individual's name has acquired a secondary meaning in the marketplace, a later competitor who seeks to use the same or similar name must take reasonable precautions to prevent the mistake. 

Still, determining what constitutes reasonable precautions or limitations entails a fact-intensive analysis that must be made with balance and the understanding that to prohibit an individual from using his true family surname is to take away his identity and is so grievous an injury that courts will avoid imposing it, if they possibly can.’

Shear Contractors, Inc. v. Shear Enterprises & General Contracting, 2010 WL 4781335, (U.S. District Court for the Northern District of New York 2010).

The judge found Van Praagh had sufficiently alleged that “`Van Praagh’ is distinctive so as to qualify as a valid mark for the purposes of a claim for false designation of origin or unfair competition.” Van Praagh v. Gratton, supra.    

Assuming, . . . the factual allegations in the Complaint are true, [he] has allegedly been providing spiritual medium services under the surname `Van Praagh’ for twenty years. In connection with these services, [he] has used `Van Praagh’ for his books, websites, shows and seminars. Over the years, [the Plaintiff], under the `Van Praagh’ surname, has built himself a large following and is now one of the most-recognized purported psychics in the world.

Accordingly, based on these factual allegations, the Court finds that the Complaint has adequately alleged that `Van Praagh’ has acquired a secondary meaning in the marketplace in order to state a claim for false designation of origin under the Lanham Act, as well as an unfair competition claim under New York State common law.

Van Praagh v. Gratton, supra.    

He also found Van Praagh had sufficiently alleged that Gratton’s use his surname  

is likely to cause confusion so that [his] trademark infringement and false designation of origin claims survive this stage of the litigation. Indeed, [he] asserts that the [Gratton], under the name `Lynn Van Praagh’ or `Lynn Van Praagh–Gratton,’ has begun offering the same or similar spiritual medium services as [he] offers. 

She has used these names in connection with marketing she has done online through her website, Facebook page, Twitter account and YouTube channel. In the Court's view, `Lynn Van Praagh’ and `Lynn Van Praagh–Gratton’ could be considered similar to the Plaintiff's James Van Praagh Trademark and Van Praagh Trademark.

Moreover, according to her website, [Gratton], like [Van Praagh], travels across the country offering her alleged spiritual medium services. Also, her website suggests that she is from a family of psychics, and even mentions that some of her siblings have a spiritual gift. As such, the Court finds that it is possible that [her] use of `Van Praagh’ in association with her spiritual medium services may confuse a consumer into think that her services are in some way connected to or endorsed by [van Praagh].

Van Praagh v. Gratton, supra.    

The judge then took up Gratton’s challenge to Van Praagh’s cause of action for trademark dilution in violation of 15 U.S. Code § 1125(c).  Van Praagh v. Gratton, supra.    

`To prevail on a federal trademark dilution claim, a plaintiff must prove (1) its mark is famous and distinctive, (2) its mark is used in commerce by the defendant, and (3) the defendant's use is likely to cause dilution through either “blurring” or “tarnishment.”’ Boarding School Review, LLC v. Delta Career Educ. Corp., 2013 WL 6670584 (U.S.District Court for the Southern District of New York 2013). . . . `[D]ilution by blurring refers to the whittling away of the established trademark's selling power and value through its unauthorized use by others.’ Study Logic, LLC v. Clear Net Plus, Inc., 2012 WL 4329349 (U.S. District Court forthe Eastern District of New York 2012). 

`Whether a mark or trade name is likely to cause dilution by blurring depends on factors including the similarity between the mark and the famous mark, the distinctiveness and degree of recognition of the famous mark, and whether the user of the mark or trade name intended to create an association with the famous mark.’ Study Logic, LLC v. Clear Net Plus, Inc., supra (quoting Estate of Ellington ex rel. Ellington v. Harbrew Imports Ltd., 812 F.Supp.2d 186 (U.S.District Court for the Eastern District of New York 2011). . . .

Van Praagh v. Gratton, supra.    

The judge found Van Praagh had stated a claim for trademark dilution because he,

using the name `James Van Praagh,’ is recognized worldwide for the alleged psychic services he provides, which involves publishing books and appearing on widely syndicated television shows and at large conferences throughout the United States. Thus, the Complaint suggests the James Van Praagh Trademark and the Van Praagh Trademark have been used in commerce and are famous and distinctive.

Moreover, the Complaint further alleges [Gratton] is using the `Van Praagh’ name to offer her own spiritual medium services, which the Court finds could result in the dilution of [his] marks, depending on what discovery reveals with respect to (1) whether [Gratton’s] use has impacted the selling power of the James Van Praagh and the Van Praagh Trademark and (2) the quality of the services offered by [Van Praagh] while using the James Van Praagh Trademark and the Van Praagh Trademark as compared to those offered by [Gratton] while using similar marks. . . .

Van Praagh v. Gratton, supra.    

The judge therefore denied Gratton’s Rule 12(b)(6) motion insofar as it was directed at these claims, which mean they survive.  Van Praagh v. Gratton, supra.