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Zibas, Monagle and Barrett Set New Precedent with Summary Judgment in Trademark and Cybersquatting Case

September 12, 2017

Jura Zibas (Partner-New York), James Monagle (Of Counsel-New York) and Stephen Barrett (Associate-New York) obtained summary judgment in a trademark infringement and cybersquatting lawsuit brought by a religious entity against a nonprofit offering online minister ordinations to preside over weddings of friends and family. The case was venued in the United States District Court for the Southern District of New York. The plaintiff alleged that the nonprofit infringed its trademarks through the registration of domain names and by bidding on advertising keywords on internet search engines such as Google. The plaintiff aggressively policed its trademarks and had previously prevented the nonprofit from obtaining a trademark based on the plaintiff’s prior registrations. Despite the fact that the plaintiff’s trademarks had reached incontestable status, Jura, Jim and Stephen successfully argued that the marks were generic ab initio and therefore were subject to cancellation. As a result, the Court ruled that the plaintiff’s trademarks should never have been granted. The Court also agreed that there was no likelihood of confusion between the respective uses of this generic phrase. In light of these findings, the complaint was dismissed in its entirety and sets a new precedent in the Second Circuit for the application of the rarely litigated “genericness defense.”

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