Kaplan, Inc. and Tracy Yun both offered graduate test
preparation services under trademarks that incorporated the term
"Manhattan;" Kaplan operated under MANHATTAN PREP, and
Yun operated under MANHATTAN ELITE PREP. Prior to initiating its
action, Kaplan had filed an application with the U.S. Patent and
Trademark Office (USPTO) in 2012 to register its MANHATTAN PREP
mark on an "intent to use" basis. After initially
refusing to register the mark, the USPTO ultimately reversed its
refusal approved MANHATTAN PREP for publication in October
2013.
Three months after it filed its application with the USPTO, Kaplan
wrote to Yun, demanding that she and her company cease infringing
the MANHATTAN PREP mark through the use of the MANHATTAN ELITE PREP
mark. Yun's response claimed superior trademark rights to
Kaplan, as well as the invalidity of the MANHATTAN PREP mark.
Despite efforts to reach a settlement, Kaplan filed its action in
February 2013, alleging, inter alia, trademark infringement under
the Lanham Act. Kaplan claimed senior rights in its mark, based on
seven months of use of MANHATTAN PREP prior to Yun's first use
of MANHATTAN ELITE PREP, as well as extensive marketing and
investment in the MANHATTAN PREP mark.
Yun moved to dismiss Kaplan's action for failure to state a
claim under the Lanham Act. To state a claim of trademark
infringement under the Lanham Act, a party must show that it has a
distinctive mark entitled to protection, and that use of the
allegedly infringing mark is likely to cause confusion. Yun's
motion to dismiss attacked Kaplan's assertion that MANHATTAN
PREP is a distinctive mark. Yun contended that MANHATTAN PREP was,
in fact, merely descriptive, and therefore not entitled to Lanham
Act protection.
The parties had agreed that MANHATTAN PREP is a descriptive name,
and it could only be a protectable trademark if it had acquired
secondary meaning in the marketplace. Yun contended, inter alia,
that Kaplan had alleged seven months of use of MANHATTAN PREP prior
to Yun's first use of MANHATTAN ELITE PREP. This amount of
time, Yun argued, was insufficient for MANHATTAN PREP to have
acquired distinctiveness in the marketplace. Therefore, the
MANHATTAN PREP mark could not be distinctive and entitled to
protection under the Lanham Act.
The Court disagreed with Yun's argument and denied summary
judgment as to Kaplan's Lanham Act infringement claim. To the
Court, the length of time necessary for a mark to acquire
distinctiveness is a question of fact that cannot be determined at
the summary judgment stage. The Court opined: "[T]here is no
magic time span that confers secondary meaning. It is not
implausible for a mark to acquire secondary meaning within months
in certain peculiar and extraordinary factual
circumstances."
Here, the Court held out the possibility that "extraordinary
factual circumstances" could have conferred secondary meaning
on MANHATTAN PREP in a very short time. Even though it would still
ultimately fall on Kaplan to demonstrate such circumstances were
indeed present, Kaplan's action survived Yun's motion to
dismiss on the strength of seven months of use.
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