IP Law Daily, TRADEMARK NEWS: NYC comedy club sues competing venue for trademark infringement, (Aug 17, 2022)

By Jonathan Anderson

The suit seeks more than $150,000 to recover profits arising from the alleged infringement and treble and punitive damages for intentional and willful conduct.

Brooklyn Comedy Collective (BCC) has filed suit against a competing comedy club after the competitor changed its name to “BKLYN Comedy Club,” which BCC alleges is an “unauthorized and infringing misappropriation of its well-known and distinctive trade name and trademark.” The complaint, filed in U.S. District Court for the Eastern District of New York, seeks relief against the defendants for trademark infringement under federal and state trademark laws, false designation of origin, common law trademark infringement, and unfair competition. BCC is also seeking a court order to enjoin the defendants from using the “BKLYN Comedy Club” mark as the name of its venue and in connection with advertising and promotion of its comedy shows (Brooklyn Comedy Collective Inc. v. Omhbrooklyn LLC, August 12, 2022).

Background. Since February 2018, BCC has offered comedy shows, open-mics, improvisation performances, comedy classes, and other services at its Brooklyn location. During that time, the company has continuously and exclusively used the name Brooklyn Comedy Collective and the abbreviation BCC. Nearly two years later, the defendant opened a competing comedy club initially named “Old Man Hustle” (OMH) within a 5-minute walk of BCC.

On November 16, 2021, BCC obtained a New York State trademark registration for the mark BCC BROOKLYN COMEDY COLLECTIVE, claiming a date of first use of February 5, 2018. The complaint alleges that given the proximity of the two clubs and the popularity of BCC’s shows and classes, it is unlikely that OMH did not know about BCC when it rebranded in March 2021 to “BKLN Comedy Club.”

The plaintiff alleges that the defendants’ use of the mark BKLN Comedy Club is “nearly identical and confusingly similar to” Brooklyn Comedy Collective and that the mark “is likely to, and already has, deceived, confused, and misled actual customers before, during, and/or after purchasing tickets, into believing that OMH is somehow authorized, connected, or associated with BCC, which it is not,” the complaint states.

Federal trademark infringement, false designation. The first cause of action alleges that the defendants’ use of the “BKLYN Comedy Club” mark is in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). “Upon information and believe, Defendants have intentionally and knowingly adopted and used a name, mark, or false designation of origin likely to cause confusion in the marketplace as to the source, origin, or sponsorship of the goods and services offered by Defendant,” the complaint reads.

State trademark infringement. The second cause of action alleges that the defendants are in violation of N.Y. Gen. Bus. Law § 360-k. The plaintiff argues that the mark is strong and has acquired secondary meaning. Defendants’ use of the mark “constitutes a use in New York commerce that is likely to cause confusion and mistake and to deceive consumers as to the source or origin of Plaintiff’s services such that consumer may believe that Defendant’s club, services, website, and social media marketing are sponsored by, endorsed by, approved by, licensed by, authorized by, or affiliated or connected with Plaintiff,” the complaint states.

Common law trademark infringement, unfair competition. Finally, the third cause of action alleges that the defendants’ “acts and conduct as alleged herein constitute common law trademark infringement and unfair competition, and have already caused BCC irreparable damage and will, unless enjoined, continue to so damage BCC, which has no adequate remedy at law.”

Relief sought. The lawsuit seeks a preliminary and permanent injunction against the defendants to prevent them from using the “BKLYN Comedy Club” mark as the name of its venue and in connection with advertising and promotion of its comedy shows. The suit also seeks to prevent the defendants from using the “BKLYN Comedy Club” mark and related marks in any other activity that constitutes unfair competition and to abandon a U.S. Trademark application, among other action.

The suit seeks more than $150,000 to recover profits arising from the alleged infringement, treble and punitive damages for intentional and willful conduct, and attorney fees.

The Case is No. 1:22-cv-04758-AMD-TAM.

Attorneys: Robert Steven Weisbein (Foley & Lardner LLP) for Brooklyn Comedy Collective Inc.

Companies: Brooklyn Comedy Collective Inc.; Omhbrooklyn LLC

News: Trademark NewYorkNews