IP Law Daily, TRADEMARK—E.D.N.Y.: Spiritual medium James Van Praagh can pursue claims against his sister for commercial use of “Van Praagh” name, (Jan 29, 2014)

By Cheryl Beise, J.D.

Nationally known spiritual medium James Van Praagh can pursue claims for trademark infringement, dilution, false designation of origin, and unfair competition against his sister for using the surname “Van Praagh” in connection wither spiritual medium services, the federal district court in Central Islip, New York has determined (Praagh v. Gratton, January 28, 2014, Spatt, A.).

For the past 20 years, James Van Praagh has provided spiritual medium services under the name “James Van Praagh” and the surname “Van Praagh.” Van Praagh claimed that he built valuable good will in his name and has become one of the most-recognized psychics in the world though his appearances on television shows, his participation in seminars, and his book sales, among other things.

In 2010, Van Praagh learned that his sister, Lynn Gratton, began providing her own spiritual medium services using the surname “Van Praagh,” even though she had used the surname “Gratton” since her marriage in 1970. Gratton promoted her services under the name “Lynn Van Praagh” and “Lynn Van Praagh-Gratton” in various venues throughout the United States and on her Facebook Page, Twitter account, YouTube channel, and the websites, “lynnievanpraagh.com” and “lynnievanpraaghgratton.com.”

In January 2013, Van Praagh filed suit against Gratton, asserting claims for trademark infringement, false designation of origin, and trademark dilution in violation of the Lanham Act, and trademark infringement, unfair competition, trademark dilution, and deceptive acts and practices in violation of N.Y. Gen. Bus. Law (“NYGBL”) §§ 349 and 360-1 and New York common law.

Before the court was Gratton’s motion to dismiss Van Praagh’s complaint pursuant to Federal Rule of Civil Procedure 12(b)(6).

Trademark infringement and unfair competition. The court first determined that Van Praagh stated claims for trademark infringement and false designation of origin under the Lanham Act, as well as claims for trademark infringement and unfair competition under New York common law.

Approximately two years after Gratton began using the “Van Praagh” name, Van Praagh obtained two federal trademark registrations for “James Van Praagh.” The registered “James Van Praagh” marks constituted valid marks for purposes of his trademark infringement claim under Section 32 of the Lanham Act.

Van Praagh also claimed to have an unregistered trademark for his surname alone, “Van Praagh.” Personal names used as trademarks are generally regarded as descriptive terms and are 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, the court explained.

In this case, the court found that Van Praagh sufficiently alleged that the “Van Praagh” mark was distinctive so as to qualify for trademark protection. According to the complaint, over the course of 20 years, using the “Van Praagh” surname for books, websites, television shows, and seminars, Van Praagh purportedly built a large following and had become one of the most-recognized psychics in the world. Such allegations were sufficient to show that the “Van Praagh” mark had acquired secondary meaning in the marketplace.

The court also determined that the complaint sufficiently alleged that Gratton’s use of “Van Praagh” in association with her spiritual medium services possibly could confuse consumers into thinking that her services were in some way connected to or endorsed by Van Praagh. For example, Gratton’s website touted that she was from a family of psychics, even mentioning that some of her siblings had a spiritual gift.

The court, therefore, denied Gratton’s motion to dismiss Van Praagh’s state and federal trademark infringement, false designation of origin, and unfair competition claims.

Trademark dilution. To prevail on a trademark dilution claim under Section 43(c) of the Lanham Act, a plaintiff must prove that (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. In contrast with federal trademark dilution law, a claim for trademark dilution under New York law, NYGBL § 360-1, does not require a mark to be famous to be protected.

The court determined that Van Praagh stated claims for trademark dilution under both federal and New York State law. The name “James Van Praagh” allegedly was recognized worldwide for the plaintiff’s psychic services, which involved publishing books and appearing on widely syndicated television shows and at large conferences throughout the United States. Thus, Van Praagh alleged that the marks “James Van Praagh” and “Van Praagh” were famous and distinctive.

The court also observed that Gratton’s use of “Van Praagh” plausibly could dilute the plaintiff’s marks; for example, if the facts were to show that Gratton’s services were qualitatively inferior to those of her brother and that her use of “Van Praagh” negatively impacted the value of her brother’s “James Van Praagh” and “Van Praagh” marks.

Deceptive acts and practices. To make out a prima facie case for deceptive acts and practices under NYGBL § 349, a plaintiff must demonstrate that (1) the defendant’s deceptive acts were directed at consumers, (2) the acts are misleading in a material way, and (3) the plaintiff has been injured as a result. However, in trademark cases, the court observed that “the prevailing view in the Second Circuit is that ‘trademark infringement claims are not cognizable under § 349 unless there is specific and substantial injury to the public interest over and above the ordinary trademark infringement,’” Perfect Pearl Co., Inc. v. Majestic Pearl & Stone, Inc., 887 F. Supp. 2d 519, 543 (S.D.N.Y. 2012).

As Van Praagh alleged no facts suggesting anything beyond the general consumer confusion normally found in a trademark infringement case, he failed to meet the threshold requirement of alleging that the matter affected the public interest in the State of New York.

Van Praagh’s cause of action under NYGBL § 349 was dismissed, but all other claims remained.

The case is No. 13-CV-375 (ADS) (AKT).

Attorneys: Thomas P. Heneghan (Whyte Hirschboeck Dudek, SC) and Philip L. Hirschhorn (Buchanan Ingersoll & Rooney PC) for James Van Praagh. Mark S. Frey for Lynn Gratton.

Cases: NewYorkNews