HAMDARD TRUST v. AJIT NEWSPAPER ADVERTIS., 394 Fed.Appx. 735 (2nd Cir. 2010)

No. 09-4965-cv.United States Court of Appeals, Second Circuit.
September 28, 2010.

Appeal from a judgment of the United States District Court for the Eastern District of New York (Pollak, M.J.).

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UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED ANDDECREED that the judgment of the district court beAFFIRMED.

Jonathan R. Miller (Mark Thompson, on the brief), Adorno Yoss Wong Fleming, PC, Princeton, New Jersey, for Appellant.

Jason M. Drangel, Epstein Drangel Bazerman James, LLP, New York, New York, for Appellees.

PRESENT: DENNIS JACOBS, Chief Judge, ROBERT A. KATZMANN, DEBRA A. LIVINGSTON, Circuit Judges.

SUMMARY ORDER
Plaintiff Sadhu Singh Hamdard Trust appeals from orders of the district court granting summary judgment in favor of defendant Ajit Newspaper Advertising, Marketing and Communications, Inc., on its claim under the Lanham Act, and denying its motion to amend its complaint in order to add a claim of unfair competition under New York common law.[1] We assume the parties’ familiarity with the underlying facts, the procedural history, and the issues presented for review.

After conducting a de novo review, Boule v. Hutton, 328 F.3d 84, 90 (2d Cir. 2003), we conclude that the district court’s order granting summary judgment in favor of defendants was proper. Plaintiff failed to show that it “possessed a priority right to the use” of the mark in question. ITC Ltd. v. Punchgini Inc., 482 F.3d 135, 154 (2d Cir. 2007). Plaintiffs “meager trickle of business” in the United States was insufficient to “constitute[] the kind of bona fide use intended to afford a basis for trademark protection.” La Societe Anonyme des Parfums le Gallon v. Jean Patou, Inc., 495 F.2d 1265, 1272 (2d Cir. 1974). Plaintiff failed to establish “deliberate” use of the mark in the United States; rather, its “sporadic” and “casual” use was insufficient to defeat the grant of summary judgment in favor of defendants as a matter of law. Id. As the district court observed, a trademark is “recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.” Buti v. Impressa Perosa, S.R.L., 935 F.Supp. 458, 460 (S.D.N.Y. 1996) aff’d, 139 F.3d 98 (2d Cir. 1998). Accordingly, “foreign use is ineffectual to create trademark rights in the United States.” La Societe Anonyme, 495 F.2d at 1270
n. 4.

We review a district court’s denial of leave to amend a complaint for abuse of discretion, Green v. Mattingly, 585 F.3d 97, 104 (2d Cir. 2009), and find none. The district court applied the proper legal standards in analyzing plaintiffs motion to amend its complaint, and determined that granting the motion would cause undue delay and prejudice to, defendants. The plaintiff expressed an intention to expand proceedings to add a marketing expert, a step that would predictably induce the defendant to do the same. Under these circumstances, the court’s denial of leave to amend can certainly “be located within the range of permissible decisions.” Id. (internal quotation marks omitted) see also Ansam Assocs., Inc. v. Cola Petroleum, Ltd, 760 F.2d 442, 446 (2d Cir. 1985). Moreover, the court noted that the potential viability of the claim plaintiff sought to add had been recognized for years. See Cress-well v. Sullivan Cromwell, 922 F.2d 60, 72 (2d Cir. 1990) (stating “the court is free to conclude that ignorance of the law is an

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unsatisfactory excuse” for delay and finding no abuse of discretion in’ court’s denial of leave to amend complaint).

We have considered all of plaintiffs arguments properly presented on appeal, and find them to be without merit. Accordingly, we hereby AFFIRM the judgment of the district court.