The Sam Bernstein Law Firm, PLLC v. Better Call Sam, The Law Office of Samantha Maguire, PLLC, and Samantha Maguire

Summary

The United States District Court for the Western District of New York addresses the plaintiff’s motion to strike affirmative defenses and dismiss counterclaims in a trademark infringement action involving the marks “CALL SAM” and “Better Call Sam.” The court denies the motion as to the parody, First Amendment, and weakness-of-mark defenses without prejudice, but strikes the defenses of laches, estoppel, acquiescence, and unclean hands. The court also dismisses the defendant’s declaratory-judgment counterclaims without prejudice, primarily because they duplicate the trademark infringement claims and the court declines to exercise declaratory-judgment jurisdiction.

Holdings

1. The court denied without prejudice the motion to strike Maguire's parody and First Amendment defenses because, although the defenses appeared potentially redundant to the likelihood-of-confusion issue and the court was skeptical that parody had been plausibly alleged, Plaintiff had not shown sufficient prejudice from litigating them at that stage.
2. The court struck Maguire's fourth affirmative defense asserting laches, estoppel, and acquiescence.
3. The court struck Maguire's fifth affirmative defense asserting unclean hands.
4. The court denied without prejudice the motion to strike Maguire's sixth affirmative defense concerning non-dilution and weakness of the mark.
5. The court dismissed Maguire's counterclaims for declaratory judgments of non-infringement without prejudice because it declined to exercise jurisdiction under the Declaratory Judgment Act.

Questions Presented

1. Whether Maguire's parody and First Amendment defenses should be stricken under Rule 12(f).
2. Whether Maguire's laches, estoppel, and acquiescence defenses were sufficiently pleaded and legally supported to survive a Rule 12(f) motion.
3. Whether Maguire's unclean-hands defense was legally available based on allegations concerning Plaintiff's enforcement of its trademark rights.
4. Whether Maguire's non-dilution/weakness-of-mark defense should be stricken as irrelevant or prejudicial to the trademark-infringement claims.
5. Whether the court should dismiss Maguire's declaratory-judgment counterclaims by declining jurisdiction under the Declaratory Judgment Act.

Disposition

other