IP Law Daily, TRADEMARK—E.D.N.Y.: Summary judgment granted in nightclub sound system dispute, (Jul 13, 2022)

By Kevin M. Finson, J.D.

Summary judgment against the holder of descriptive marks was appropriate because there was no evidence of acquired distinctiveness.

A holder of descriptive marks related to sound systems did not create a genuine question of material fact on the issue of acquires distinctiveness, the U.S. District Court in Brooklyn has held. There was no evidence in the record from which a reasonable jury could have found in favor of the patentee (C.M.B. Productions, Inc. v. SRB Brooklyn, LLC, July 19, 2022, Vitaliano, E.).

C.M.B. Productions, Inc. (CMB) was in the business of designing and providing sound systems to night clubs. SRB Brooklyn, LLC (SRB) operated a nightclub and engaged in a joint venture with CMB in which CMB provided an analog sound system and SRB's club was renamed ANALOG BKNY. While the joint venture was intact, SRB registered the ANALOG BKNY word mark, a related logo, and the mark CLUB ANALOG with the USPTO. CMB later ended the relationship and removed its sound system from the premises. CMB sent cease and desist letters to SRB and its owners and managers demanding that they cease using the ANALOG BKNY marks, and after the refused to comply filed suit for infringement and related claims. The defendants did not comply, they continued to use the marks, and, on social media, utilized the hashtag #analogbkny in connection with events at the night club. The defendants did, however, change the name of the night club from ANALOG BKNY to ANALOG BROOKLYN and they replaced the night club’s sound system.

CBM filed suit against SRB and two individuals, asserting claims for trademark infringement, false designation of origin, unfair competition, and false advertising under the Lanham Act, as well as claims under New York law for unfair & deceptive practices and trademark dilution. Both sides moved for summary judgment.

Lanham Act claims. SRB argued that the marks were not protectible because they lacked distinctiveness. The parties did not dispute that the ANALG BKNY marks were descriptive of the night club’s sound system and location, so were only protectible if they had acquired distinctiveness. CMB failed to produce any consumer studies or other evidence of market share, advertising, or anything else to awareness of the marks in the marketplace. The sales numbers provided lacked any context that could have made them useful. The court granted summary judgment in favor of SRB as to each of the Lanham Act claims.

Finding that the related state law claims were essentially identical to those brought under the Lanham Act, the court also granted summary judgment as to those claims.

The Case is No. 1:19-cv-02009-ENV-CLP.

Attorneys: Alozie Etufugh (Law Offices of Alozie N. Etufugh, PLLC) for C.M.B. Productions, Inc. Partha Pratim Chattoraj (Allegaert Berger & Vogel LLP) for SRB Brooklyn, LLC.

Companies: C.M.B. Productions, Inc.; SRB Brooklyn, LLC

Cases: Trademark NewYorkNews