City of NY’s motion was granted in part and denied in part against Blue Rage in a case involving TM infringement
Date Published: Jun 24, 2021
The City of New York (“the City”) holds various trademarks obtained through registration with the United States Patent and Trademark Office (“USPTO”). The City claims ownership of all trademarks, logos, names and insignia associated with the New York Police Department (“NYPD Trademarks”), including the abbreviation NYPD (“NYPD Mark”) and a design consisting of the words “POLICE DEPARTMENT CITY OF NEW YORK” around a shield design (“NYPD Shield”). Blue Rage, Inc. has been engaged in online business under the name The Cop Shop (“Cop Shop”), Salvatore Piccolo (“Salvatore”), and Susan Piccolo (“Susan”) (collectively “Blue Rage”). The City claims that Blue Rage has sold products that are marked with the trademarked logos and/or emblems. The City filed a suit against Blue Rage in United States District Court Eastern District of New York (“The Court”) (City of NY v. Blue Rage Inc. 435 F. Supp. 3d 472 (E.D.N.Y. 2020)) alleging violations of the Lanham Act along with other things like unfair competition. The Court held that the City’s motion is granted in part and denied in part, and Blue Rage’s motion is denied in its entirety.
Salvatore Piccolo owns, and is the Chief Executive Officer (CEO) of Blue Rage, which does business as the Cop Shop. His wife, Susan Piccolo, is the manager at the same Shop. Prior to opening the storefront, Salvatore, who retired in 2001 after twenty years as a Transit Policeman for the City, began making and selling t-shirts to fellow members of the transit bureau police force in or about the year 1987. He also printed and sold t-shirts, referred to as “house,” “precinct” or “buff” shirts, designed and ordered by individual precincts or firehouses.
The City has the ownership over all trademarks, logos, names, and insignia associated with the Fire Department of the City of New York, including the abbreviation “FDNY” (“FDNY Mark”), and a distinctive shield with the words “FIRE DEPARTMENT CITY OF NEW YORK”, the colors red, white, and blue, and a stylized Maltese cross with flames inside over a representation of the New York City skyline ("FDNY Shield"). According to the registrations, majority of the marks were first used in commerce after the year 2000.
Blue Rage did not deny the fact that the City has registered trademarks for the marks in question to the extent set forth in the various registrations. However, Blue Rage argues that the City only owns the abbreviations and all logos, names and insignia associated with the NYPD and FDNY. Blue Rage further contends that they have used the marks in question in commerce prior to the year 2000.
In 1990, Salvatore was in front of the precinct on his day off selling t-shirts with the Transit Police logo. Salvatore’s superior, Chief O'Connor, observed the activity and asked Salvatore who had given him permission to sell the shirts with logos and emblems, to which Salvatore responded that he did not need permission. When O'Connor tried to transfer Salvatore's duty station, Salvatore called William Bratton, the then Commissioner of the Transit Police. During the call, Salvatore asked Bratton “for permission to use the transit police shield and Bratton said that he didn't need permission to use the transit police shield because it was a City logo and it was owned by the people of the City of New York.” Salvatore took this to constitute permission to sell anything with the transit police logo.
In 1995, the Transit Police merged with the NYPD. That same year, Susan wrote to William Bratton because she wanted to make sure that they "were allowed to do what they were doing i.e. sell clothing with logos and emblems with no problems because of the merger of Transit Police and NYPD. It was a "short letter" in which she asked Bratton "if we could still use all those logos or we just had to use the NYPD logo." Susan claims Bratton wrote a response in which he said they could keep using the logo as long as they did not disgrace the department.
The City has submitted a declaration from Commissioner Bratton in which he states that (1) he does not recall having met or spoken with Susan or Salvatore; (2) he would not have given permission to them to use NYPD marks for merchandising nor told them they were free to do so because he did not possess authority to give such permission; and lastly (3) he would not have told them that the NYPD insignia could be freely used due to concerns regarding criminal impersonation.
On March 4, 2014, the City sent a cease and desist letter to Defendants regarding the sale of unlicensed and unauthorized merchandise bearing the NYPD and FDNY trademarks.On June 15, 2016 and May 17, 2017, investigators from NYC & Company, the City's licensing agent, visited the Cop Shop and observed and photographed substantial quantities of unlicensed souvenir merchandise for sale bearing the NYPD or FDNY marks.
The City claims that Blue Rage has sold products that are marked with the trademarked logos and/or emblems. The City filed a suit against Blue Rage in United States District Court Eastern District of New York.
The City filed its complaint on June 9, 2017, claiming 6 causes of action against Defendants: (1) trademark infringement (2) false designation of origin and/or false description or representation (3) trademark dilution (4) common law unfair competition (5) trademark infringement in violation of New York General Business Law and (6) deceptive trade practices and false advertising under New York General Business Law. The City seeks injunctive relief and damages.
The Court held that Blue Rage infringed on the trademarks of the City under the Lanham act and also that Blue Rage is liable for false designation of origin as to the NYPD Shield, NYPD Mark, and FDNY Shield as used on merchandise. However the remaining claims of Infringement and false designation and trademark dilution claims are rejected. Blue Rage’s arguments were rejected in their entirety.
City of NY v. Blue Rage Inc. 435 F. Supp. 3d 472 (E.D.N.Y. 2020)