Antitrust Law Daily Wrap Up, ADVERTISING—E.D.N.Y.: Lack of injury dooms Lanham Act claims over SOLFIRE mark, (May 9, 2016)

By Greg Hammond, J.D.

The original registrant of the SOLFIRE trademark has failed to state a Lanham Act false advertising claim against the current owner of the mark. In dismissing the false advertising claim, the federal district court in Brooklyn determined that the original registrant failed to allege that the current owners’ actions harmed a current commercial interest (Solfire Group, LLC v. Solfire Enterprises, LLC, May 5, 2016, Brodie, M.).

Solfire Group, LLC manufactured, distributed, and sold tennis apparel marketed under the SOLFIRE trademark. Although Solfire Group was listed as the original registrant for the SOLFIRE mark, the mark was allegedly assigned to Solfire Enterprises, LLC, which purportedly remains the current owner on U.S. Patent and Trademark Office records. Solfire Group filed suit against Solfire Enterprises, bringing Lanham Act claims for trademark infringement and false advertising, among other state law claims. Solfire Enterprises moved to dismiss.

Lanham Act claims. The court granted dismissal of the Lanham Act claims, finding: (1) because Solfire Group did not allege that Solfire Enterprises’ actions harmed a current commercial interest, Solfire Group failed to establish that it suffered an injury proximately caused by any alleged false advertising; and (2) because Solfire Group failed to allege any facts from which the court could infer Solfire Group’s use of the mark, Solfire Group failed to sufficiently allege a likelihood of consumer confusion to support a trademark infringement claim.

Having dismissed the Lanham Act claims, as well as finding that it lacked diversity jurisdiction, the court concluded that it had no subject matter jurisdiction over the remaining state law claims. The motion to dismiss was therefore granted.

The case is No. 14-CV-3054 (MKB).

Attorneys: Robert Edward Pershes (Perkins Pershes PLLC) and John N. Tasolides for Solfire Group, LLC and Solfire Gear, LLC. Kevin Patrick Mulry (Farrell Fritz PC) for Solfire Enterprises, LLC and Solfire Clothing Co., LLC.

Companies: Solfire Group, LLC; Solfire Gear, LLC; Solfire Enterprises, LLC; Solfire Clothing Co., LLC

Cases: Advertising NewYorkNews