Case 1:15-cv-07411-LTS Document 26 Filed 12/21/15 Page 1 of 17

DORSEY & WHITNEY LLP

Bruce R. Ewing (BE-0724)
Elizabeth Rozon Baksh (EB-5863)
Fara S. Sunderji (FS-1208)
51 West 52nd Street
New York, New York 10019
(212) 415-9200
Attorneys for Plaintiff
World Trade Centers Association, Inc.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------------X
WORLD TRADE CENTERS
:
ASSOCIATION, INC.,
:
:
Plaintiff,
:
:
- against :
:
THE PORT AUTHORITY OF NEW YORK
:
AND NEW JERSEY,
:
:
Defendant.
:
---------------------------------------------------------------X

15 Civ. 07411-LTS

PLAINTIFFS MEMORANDUM OF LAW IN

OPPOSITION TO DEFENDANTS MOTION TO DISMISS

Case 1:15-cv-07411-LTS Document 26 Filed 12/21/15 Page 2 of 17

TABLE OF CONTENTS
TABLE OF AUTHORITIES .......................................................................................................... ii
INTRODUCTION ...........................................................................................................................1
ARGUMENT ...................................................................................................................................2
POINT I
WTCA HAS PLEADED SPECIFIC FACTS THAT ARE SUFFICIENT TO
STATE A CLAIM FOR TRADEMARK INFRINGEMENT IN VIOLATION
OF SECTION 32(1) OF THE LANHAM ACT ..............................................................................4
A.

WTCAs Marks Are Strong ........................................................................................5

B.

The Marks Are Identical Or Highly Similar ...............................................................6

C.

The Port Authoritys Goods Are Related to WTCAs

Services, and WTCA is Likely to Bridge the Gap ..................................................6

D.

The Port Authority Acted in Bad Faith .......................................................................9

E.

The Port Authoritys Goods are Directed to the

General Public, Making Confusion Likely .................................................................9

POINT II
DEFENDANTS ARGUMENT THAT WORLD TRADE CENTER IS
A GEOGRAPHIC DESIGNATION IS A GROUNDLESS
AFFIRMATIVE DEFENSE INCAPABLE OF BEING RESOLVED
ON THIS MOTION .......................................................................................................................10
CONCLUSION ..............................................................................................................................12

Case 1:15-cv-07411-LTS Document 26 Filed 12/21/15 Page 3 of 17

TABLE OF AUTHORITIES
Page(s)
Cases
Ahmed v. GEO USA LLC,
14-CV-7486, 2015 WL 1408895 (S.D.N.Y. Mar. 27, 2015) .....................................................7
Ashcroft v. Iqbal,
556 U.S. 662 (2009) ...................................................................................................................3
Bacardi & Co. v. New York Lighter Co.,
2000 U.S. Dist. LEXIS 19852 (E.D.N.Y. Sept. 5, 2000)...........................................................9
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) ...................................................................................................................3
Boarding School Review, LLC v. Delta Career Educ. Corp.,
No. 11 Civ. 8921 (DAB), 2013 WL 6670584 (S.D.N.Y. Mar. 29, 2013) .............................4, 8
Chambers v. Time Warner,
282 F.3d 147 (2d Cir. 2002).................................................................................................3, 10
Erickson Beamon Ltd. v. CMG Worldwide, Inc.,
No. 12-CV-5105, 2014 WL 3950897 (S.D.N.Y. Aug. 12, 2014) ........................................5, 10
Erickson v. Pardus,
551 U.S. 89 (2007) .....................................................................................................................3
Ferring B.V. v. Fera Pharma., LLC,
No. CV 13-4640, 2015 WL 4623507 (E.D.N.Y. July 6, 2015) .................................................3
Global Network Communications, Inc. v. City of New York,
458 F.3d 150 (2d Cir. 2006).......................................................................................................2
Harlow v. Fitzgerald,
457 U.S. 800 (1982) ...................................................................................................................3
Kaplan, Inc. v. Yun,
16 F. Supp. 3d 341, 345 (SD.N.Y. 2014) ..................................................................................7
Kelly-Brown v. Winfrey,
717 F.3d 295 (2d Cir. 2013).........................................................................................10, 11, 12
MCW, Inc. v. Badbusinessburueau.com LLC,
No. Civ. 3:02-cv-2727, 2004 WL 833595 (N.D. Tex. April 19, 2004) .....................................4

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Nikon Inc. v. Ikon Corp.,

987 F.2d 91 (2d Cir. 1993).........................................................................................................9
Paco Sport, Ltd. v. Paco Rabanne Parfums,
86 F. Supp. 2d 305 (S.D.N.Y 2000), affd without opinion, 234 F.3d 1262 (2d
Cir. 2000) ...................................................................................................................................9
Polaroid Corp. v. Polaroid Elecs. Corp.,
287 F.2d 492 (2d Cir. 1961),......................................................................................................1
Ritani, LLC v. Aghjayan,
880 F. Supp. 2d 425 (S.D.N.Y. 2012)........................................................................................3
Salahuddin v. Cuomo,
861 F.2d 40 (2d Cir.1988)..........................................................................................................3
Scheuer v. Rhodes,
416 U.S. 232 (1974) ...................................................................................................................2
Sweet v. City of Chicago
953 F. Supp. 225 (N.D. Ill. 1996) ..............................................................................................8
Telebrands Corp. v. Del Labs, Inc.,
719 F. Supp. 2d 283 (S.D.NY. 2010).........................................................................................7
Virgin Enterprises Ltd. v. Nawab,
335 F.3d 141 (2003) ...........................................................................................................5, 6, 8
Statutes
15 U.S.C. 1114(1) .........................................................................................................................4
15 U.S.C. 43(a)(1)(A) ...................................................................................................................4
15 U.S.C. 1125(a)(1)(A) ...............................................................................................................4

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INTRODUCTION
Plaintiff World Trade Centers Association, Inc. (WTCA) hereby submits this
opposition to the motion filed by defendant The Port Authority of New York and New Jersey
(the Port Authority) under Fed. R. Civ. P. 12(b)(6) to dismiss WTCA's first claim for
infringement of a registered trademark pursuant to 15 U.S.C. 1114(1).
The Port Authority's motion suffers from fundamental legal defects and ignores the
contents of WTCAs September 18, 2015 complaint [Dkt. 1] (the Complaint), such that the
Court should deny the motion. Most importantly, the baseless premise for the Port Authoritys
motion is that it is impossible as a matter of law for likely confusion to exist between a
trademark like WORLD TRADE CENTER used with association services, and the identical
trademark WORLD TRADE CENTER used with merchandise. There is no authority for
such a proposition, nor could there be, in light of the controlling case of Polaroid Corp. v.
Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), which delineates a non-exclusive,
eight-factor test that courts use to determine whether confusion between two trademarks is likely.
The Port Authority never even mentions Polaroid in its moving papers, and the reason is
obvious: the Complaint pleads specific facts bearing on most of the Polaroid factors that, when
taken as true, as they must be, establish a likelihood of confusion at this stage.
Specifically, WTCA has pleaded that: (i) it owns a strong mark that is the subject of an
incontestable federal trademark registration, Complaint, 12-13, 16-17; (ii) the parties marks
are identical or closely similar, id., 27-28; (iii) the inexpensive merchandise the Port Authority
is selling and plans to sell under WTCAs WORLD TRADE CENTER trademark is directed at
unsophisticated consumers who are part of the general public, id., 27-28, Exh. 8; and (iv) the
Port Authority has acted in bad faith. Id., 4, 32-33. These are all Polaroid factors that weigh

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in favor of a finding of likely confusion. On top of this, based on records of the U.S. Patent &
Trademark Office (the PTO) of which the Court can take judicial notice, there is a relationship
between the association services of WTCA and the goods of the Port Authority offered under the
same trademark. Moreover, WTCAs intent to offer merchandise under the WORLD TRADE
CENTER trademark and thereby bridge any competitive gap that exists is documented
through the trademark applications it has filed with the PTO. In light of all this, WTCA has
plainly pleaded more than enough by way of specific facts to overcome the Port Authoritys
motion.
Likewise, the Port Authority's fallback position that its use of WORLD TRADE
CENTER is protected because it is making fair use of a geographically descriptive term is both
legally insufficient and incapable of being resolved at this stage, because what the Port Authority
presents is an affirmative defense. Because of these and the many other flaws in the Port
Authoritys position, there is no valid basis upon which the Court could grant the relief the Port
Authority seeks.
ARGUMENT
The purpose of a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) is to test, in a
streamlined fashion, the formal sufficiency of the plaintiffs statement of a claim for relief
without resolving a contest regarding its substantive merits. Global Network Communications,
Inc. v. City of New York, 458 F.3d 150, 155 (2d Cir. 2006) (emphasis in original). On such a
motion, a court may assess the legal feasibility of the complaint, but does not weigh the
evidence that might be offered to support it. Id. The issue on a motion to dismiss is not
whether a plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to
support the claims. Scheuer v. Rhodes, 416 U.S. 232, 236 (1974), abrogated on other grounds

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by Harlow v. Fitzgerald, 457 U.S. 800 (1982). Therefore, in considering a Rule 12(b)(6) motion,
a court should construe the pleading liberally, accept all well pleaded factual allegations as true,
and draw all reasonable inferences in the plaintiffs favor. Chambers v. Time Warner, 282 F.3d
147, 152 (2d Cir. 2002).
Fed. R. Civ. P. 8(a)(2) only requires a a short and plain statement of the claim showing
that the pleader is entitled to relief in order to give the defendant fair notice of what the . . .
claim is and the grounds upon which it rests. Bell Atlantic Corp. v. Twombly, 550 U.S. 544,
555 (2007). The purpose of Rule 8 notice pleading is to enable [the adverse party] to answer
and prepare for trial. Salahuddin v. Cuomo, 861 F.2d 40, 42 (2d Cir.1988). A pleading
generally does not need detailed factual allegations, and need only be sufficient to raise a
right to relief above the speculative level. Twombly, 550 U.S. at 555. Notably, the Supreme
Court in Twombly did not impose a heightened pleading requirement beyond the notice-pleading
standard set forth in Rule 8. Id.; Erickson v. Pardus, 551 U.S. 89 (2007) (holding, two weeks
after Twombly, that courts may not require more than the notice pleading for which Rule 8
provides); see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (Rule 8 does not require
detailed factual allegations, but requires only that a complaint set forth factual allegations that
raise more than a sheer possibility that a defendant has acted unlawfully) (quoting Twombly,
550 U.S. at 555).
Applying this standard to trademark cases, courts have summarily rejected Rule 12(b)(6)
motions like that filed by the Port Authority, and this Court should do likewise. See, e.g., Ritani,
LLC v. Aghjayan, 880 F. Supp. 2d 425, 446 (S.D.N.Y. 2012) (noting that courts have refused to
dismiss infringement claims where a likelihood of confusion analysis would be necessary on the
pleadings and collecting cases); Ferring B.V. v. Fera Pharma., LLC, No. CV 13-4640, 2015

Case 1:15-cv-07411-LTS Document 26 Filed 12/21/15 Page 8 of 17

WL 4623507, at *11 (E.D.N.Y. July 6, 2015) (denying defendants motion to dismiss plaintiffs
trademark infringement claim and noting that [t]hese are issues properly left to summary
judgment motion practice or trial.); see also MCW, Inc. v. Badbusinessburueau.com LLC, No.
Civ. 3:02-cv-2727, 2004 WL 833595, *15 (N.D. Tex. April 19, 2004) (Courts have also found
that plaintiffs are not required to prove the likelihood of confusion at the pleading stage.).
POINT I
WTCA HAS PLEADED SPECIFIC FACTS THAT ARE
SUFFICIENT TO STATE A CLAIM FOR TRADEMARK
INFRINGEMENT IN VIOLATION OF SECTION 32(1) OF THE LANHAM ACT
The parties agree that, in order to state a claim for trademark infringement under Section
32(1) of the Lanham Act, a plaintiff must allege: (1) ownership of a valid mark; and (2) that
defendants use of the allegedly infringing mark would likely cause confusion as to the
affiliation, connection or association of defendant with plaintiff, or as to the origin or
sponsorship of defendants goods or services with plaintiffs goods or services. 15 U.S.C.
1114(1); Moving Brief [Dkt. 17] at 3. The Port Authority has not asserted that WTCA failed to
plead facts sufficient to demonstrate the first element ownership of a valid mark and such an
argument would be impossible in any case, in light of the pleaded trademark registrations for
WORLD TRADE CENTER and WTC that WTCA owns. Complaint 17.
Instead, the Port Authority argues that WTCA has failed to plead facts sufficient to
support a finding of likely confusion. Moving Brief at 3-7. 1 Courts in the Second Circuit

The Port Authority did not move to dismiss WTCAs claim for unfair competition and the use
of false designations of origin in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C.
1125(a)(1)(A). As demonstrated in the very case cited by the Port Authority, Boarding School
Review, LLC v. Delta Career Educ. Corp., the standard for a claim of unfair competition is
essentially identical to the standard for a claim of infringement of a federally registered
trademark, and both require proof of likely confusion in order to be maintained. No. 11 Civ.
8921 (DAB), 2013 WL 6670584, at *3 (S.D.N.Y. Mar. 29, 2013). Given the Port Authority's
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routinely look to the non-exclusive list of factors articulated in Polaroid to assess whether a
likelihood of confusion exists: (1) the strength of the plaintiff's mark: (2) the degree of similarity
between the parties' marks; (3) the competitive proximity of the parties' products or services; (4)
the existence of actual confusion; (5) the likelihood that the plaintiff will bridge the gap
between the two markets; (6) the defendant's good faith in adopting its mark; (7) the quality of
the defendant's product; and (8) the sophistication of the purchasers. 287 F.2d at 495.
Notwithstanding this controlling authority and the factors Polaroid articulated that courts
in this Circuit have applied for more than half a century in assessing likely confusion in
trademark cases, the Port Authority never discusses Polaroid or any of the relevant factors. This
is because, if the Port Authority acknowledged Polaroid, it would also have to concede that,
generally, likely confusion is a question of fact ill-suited for determination at the motion to
dismiss phase. Erickson Beamon Ltd. v. CMG Worldwide, Inc., No. 12-CV-5105, 2014 WL
3950897, at * 8 (S.D.N.Y. Aug. 12, 2014). And, it would also have to acknowledge that the
Complaint pleads specific facts that, taken as true, establish a claim for infringement under
Section 32(1) for present purposes, as shown below.
A. WTCAs Marks Are Strong
With respect the first Polaroid factor, the Complaint pleads that the WORLD TRADE
CENTER and WTC trademarks are strong and well recognized, id., 16, and the subject of
incontestable trademark registrations. Id., 17. As a result, this factor favors a finding of likely
confusion. See Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 148 (2003) (Widespread
consumer recognition of a mark previously used in commerce increases the likelihood that
implicit concession that at least some sort of likely confusion has been properly pleaded, its
motion can only be based on the proposition that such confusion is legally impossible when the
same mark is used with association services and merchandise. As noted, there is no case, ever,
standing for that proposition.
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consumers will assume it identifies the previously familiar user, and therefore increases the
likelihood of consumer confusion if the new user is in fact not related to the first.).
B. The Marks Are Identical Or Highly Similar
As pleaded in the Complaint, the marks at issue are identical, in the case of WORLD
TRADE CENTER, or substantially similar, in the case of WTC. Complaint, 28-33. Thus, the
second factor, the degree of similarity between the two marks, also favors a likelihood of
confusion here. See id. at 149 (finding that this factor favored the plaintiff as a matter of law
because the marks were the same).
C. The Port Authoritys Goods Are Related to WTCAs
Services, and WTCA is Likely to Bridge the Gap
As noted, the Port Authoritys arguments on its motion elevate the third Polaroid factor
(without naming it as such) the competitive proximity of the parties' goods and services to
the exclusion of all others. Moving Brief at 4-7. Indeed, the Port Authority claims that because
the Complaint does not allege that the parties are competitors, or that the goods and services they
offer are competitively proximate, it follows that no likelihood of confusion could have been
properly pleaded. Id. at 6. The Port Authoritys argument misses the mark for at least two
reasons.
First, [t]his represents a considerable misunderstanding of the Polaroid test . . . [which]
was specially designed for a case like this one, in which the secondary user is not in direct
competition with the prior user, but is selling a somewhat different product or service. Virgin
Enterprises, 335 F.3d at 150. The existence of the fifth Polaroid factor the likelihood that the
plaintiff will bridge the gap between the two markets makes clear that the trademark owner
does not lose . . . merely because it has not previously sold the precise good or service sold by
the secondary user. Id. at 151. In fact, many courts have recognized, especially in an era in
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which the licensing of well-known trademarks is commonplace, that marks can extend well
beyond their core areas of use into other spheres. See id. at 149-151. The Court therefore should
not credit the Port Authoritys unsupported argument that there can be no confusion as a matter
of law between association services and consumer goods.
Second, the Port Authority has conveniently ignored PTO records, of which the Court
can take judicial notice for purposes of a motion to dismiss, demonstrating that association
services are likely to emanate from the same source as branded merchandise, and that WTCA is
likely to bridge the gap and sell branded merchandise itself. See Telebrands Corp. v. Del Labs,
Inc., 719 F. Supp. 2d 283, 287, n.3 (S.D.NY. 2010) (The Court may properly take judicial
notice of official records of the United States Patent and Trademark Office.); Kaplan, Inc. v.
Yun, 16 F. Supp. 3d 341, 345 (SD.N.Y. 2014) (In particular, the Court may take judicial notice
of official records of the United States Patent and Trademark Office (PTO); denying motion to
dismiss trademark infringement claim); Ahmed v. GEO USA LLC, 14-CV-7486, 2015 WL
1408895, at *1 (S.D.N.Y. Mar. 27, 2015) (taking judicial notice). The PTO records in question
show that there are many examples of other trademarks registered by third parties covering both
association services and various types of merchandise, such that consumers would perceive a
connection between them when offered under the same mark. See, e.g., UNITED WAY
(Registration Nos. 3766540, 3154833, 3159962 and 3088531), AMERICAN CANCER
SOCIETY (Registration No. 1615654), GUGGENHEIM (Registration No. 2366500),
OUTDOOR INDUSTRY ASSOCIATION (Registration No. 3348669) and YMCA (Registration
Nos. 3948503, 3914925 and 3948504). Copies of these registrations are attached as Exhibit 1 to
the accompanying Declaration of Bruce R. Ewing (Ewing Dec.).

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Further still, as the Port Authority is well aware, the PTO also maintains records
demonstrating that WTCA itself intends to use the marks WORLD TRADE CENTER and WTC
in connection with merchandise, including t-shirts, key rings, pens, postcards and tote bags, and
has had such an intent since at least as early as 2011. See Application Serial Nos. 85/473,613,
85/473,617, 85/474,746, 85/474,748, 85/527,008, 85/527,029, 85/527,100
85/527,11985/474,760, and 85/473,927. Ewing Dec., Exh. 2.
Considering these records of which the Court can take judicial notice, and of which the
Port Authority is well aware, 2 WTCA has shown at this stage that it is likely to bridge any
competitive gap that exists between the parties. See Virgin Enterprises, 335 F.3d at 151 (finding
that consumer confusion was virtually inevitable because the evidence showed that plaintiff
has plans to bridge the gap). The case of Boarding School Review, LLC v. Delta Career Educ.
Corp., No. 11 Civ. 8921 (DAB), 2013 WL 6670584, at *5 (S.D.N.Y. Mar. 29, 2013), upon
which the Port Authority heavily relies, is readily distinguishable. Moving Brief at 4, 6-7. In
that case, the court found that certain counterclaims for trademark infringement failed under the
Polaroid test, in part, because it was unlikely that the trademark owner would bridge the gap
based on the facts pleaded or otherwise. Similarly, the case of Sweet v. City of Chicago cited by
the Port Authority has no bearing on this one, as the court determined there that a guidebook
about restaurants that display works of art for sale was not related as a matter of law to art fairs.
953 F. Supp. 225, 231 (N.D. Ill. 1996). Here, when the specific facts pleaded in the Complaint
are taken as true, along with the material of which the Court can take judicial notice, it is clear

The Port Authority has filed extensions of time to oppose all of WTCAs trademark
applications covering merchandise for the marks WORLD TRADE CENTER and WTC. Ewing
Dec., Exh. 3.
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that association services cannot be deemed unrelated to promotional merchandise as a matter of

law.
D. The Port Authority Acted in Bad Faith
WTCA has also pleaded that the Port Authority has acted in bad faith, tilting another
Polaroid factor in its favor for present purposes. Specifically, the Complaint pleads that the Port
Authoritys use of the WORLD TRADE CENTER mark was part of a deliberate plan to invest
the Port Authoritys new hybrid trademark with the goodwill inherent in the WTCAs registered
marks. Complaint, 4, 28, 32, Exh. 8. These allegations, at this stage, are enough for the issue
of bad faith to favor WTCA. See Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir. 1993)
(finding that defendant acted in bad faith in part because it was well aware of plaintiffs mark
and the value of the attendant goodwill for many years).
E. The Port Authority's Goods are Directed to the General Public, Making Confusion Likely
Finally, the last Polaroid factor the sophistication of the purchasers also supports a
finding of likely confusion. As shown in the Complaint, the goods with which the Port Authority
is using or is planning to use the WORLD TRADE CENTER trademark are inexpensive
promotional goods like mugs, glassware and toys, which makes confusion more likely. Id., 29,
Exh. 8. Bacardi & Co. v. New York Lighter Co., 2000 U.S. Dist. LEXIS 19852, at *38-40
(E.D.N.Y. Sept. 5, 2000) (finding that consumers purchasing inexpensive goods are
unsophisticated and unlikely to pay much attention, making confusion between similar marks
more likely). The Port Authority asserts that the relevant audience among which confusion
should be assessed are the members of the WTCA, but that is plainly wrong. Indeed, the target
audience among which confusion is to be assessed is that of the defendant the Port Authority.
See Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 322 (S.D.N.Y 2000), affd

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without opinion, 234 F.3d 1262 (2d Cir. 2000) (confirming that the the relevant market consists
of the junior user's customers in cases of forward confusion). Here, because the Complaint
pleads that the goods the Port Authority is selling and plans to sell are aimed at the general
public, this Polaroid factor, like those discussed above, favors WTCA. See Erickson Beamon
Ltd. v. CMG Worldwide, Inc., No. 12 Civ. 5105 (NRB), 2014 WL 3950897, at *8 (S.D.N.Y.
Aug. 13, 2014).
POINT II
DEFENDANTS ARGUMENT THAT WORLD TRADE CENTER IS
A GEOGRAPHIC DESIGNATION IS A GROUNDLESS
AFFIRMATIVE DEFENSE INCAPABLE OF BEING RESOLVED ON THIS MOTION
In a last-ditch effort to shore up its motion to dismiss, the Port Authority argues that its
use of WORLD TRADE CENTER is not as a trademark, but as a geographically descriptive
term that, it says, cannot cause consumer confusion because it is a fair use as a matter of law.
Moving Brief at 7-8. However, it is well settled that affirmative defenses, including fair use,
generally cannot be resolved on a motion to dismiss. See, e.g., Kelly-Brown v. Winfrey, 717 F.3d
295, 308 (2d Cir. 2013) (Because fair use is an affirmative defense, it often requires
consideration of facts outside of the complaint and thus is inappropriate to resolve on a motion to
dismiss.) This is because fair use raises fact-intensive questions and often involves the
weighing of evidence. See id. at 308-313. Indeed, in order to establish the defense, the
defendant must prove three elements: that the use was made (1) other than as a mark, (2) in a
descriptive sense, and (3) in good faith. Id. at 308. When the Court construes the Complaint
liberally, accepts all well pleaded factual allegations in it as true, and draws all reasonable
inferences in WTCAs favor as it must, see Chambers, 282 F.3d at 152, the conclusion is
inescapable that the Port Authority cannot meet its burden on any of these elements.

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Indeed, the Port Authority doesn't even try to carry its burden on the first and third
elements, devoting its whole argument to the second element of the defense descriptive use
which it claims can be implied from the fact that One Word Trade Center is the address of its
observatory, and because the Complaint supposedly does not allege that the Port Authority uses
the designation in any other way. Moving Brief at 7-8. However, this assertion is false; the
Complaint pleads specifically that the Port Authority is using WORLD TRADE CENTER as a
trademark. Complaint 4 (the Port Authority began using a new trademark and logo for its
One World Observatory that incorporates WTCAs WORLD TRADE CENTER trademark, as
part of a deliberate effort to endow the Port Authoritys new mark with the goodwill inherent in
WTCAs WORLD TRADE CENTER mark (emphasis added)). As if that wasnt enough,
Exhibit 8 to the Complaint shows that the designation WORLD TRADE CENTER is being used
as a mark, and not descriptively, on teddy bears, glassware and coffee mugs. On this basis alone,
the Port Authoritys fair use argument fails.
And as for the last fair use element, the Port Authority offers nothing on the element of
good faith, nor could it, because, as noted above, the Complaint pleads that the Port Authority
has acted in bad faith. In particular, the Complaint pleads that the Port Authority is well aware
of WTCAs rights in the registered trademarks WORLD TRADE CENTER and WTC,
Complaint 32, but nevertheless, as part of a deliberate plan to free ride on the goodwill inherent
in WTCAs mark, chose to incorporate WORLD TRADE CENTER into its own mark, Id., 4.
Therefore no proper dismissal of WTCAs claims on the ground of fair use could result in these
circumstances. See Kelly-Brown, 717 F.3d at 313 (noting that a plaintiff may also show
absence of good faith where a junior user had knowledge or constructive knowledge of the senior
user's mark and chose to adopt a similar mark.).

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CONCLUSION
For all of the foregoing reasons, plaintiff World Trade Centers Association, Inc.
respectfully requests that the Court deny in its entirety the motion to dismiss filed by defendant
The Port Authority of New York and New Jersey pursuant to Fed. R. Civ. P. 12(b)(6).
Dated:

New York, New York

December 21, 2015

DORSEY & WHITNEY LLP

By: /Bruce R. Ewing/
Bruce R. Ewing (BE-0724)
Fara S. Sunderji (FS-1208)
Elizabeth Rozon Baksh (EB-5863)
51 West 52nd Street
New York, New York 10019
(212) 415-9200
Attorneys for Plaintiff
World Trade Centers Association, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on the 21st day of December 2015, the foregoing PLAINTIFFS
MEMORANDUM OF LAW IN OPPOSITION TO DEFENDANTS MOTION TO
DISMISS was filed through the ECF system and will be sent electronically to the registered
participants as identified on the Notice of Electronic Filing.
/Bruce R. Ewing/
Bruce R. Ewing