UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
`THE SAM BERNSTEIN LAW FIRM, PLLC,
`Plaintiff,
`vs.
`BETTER CALL SAM, THE LAW OFFICE OF
`SAMANTHA MAGUIRE, PLLC, and,
`SAMANTHA MAGUIRE,
`Defendants.
`DECISION AND ORDER
`25-CV-0252-MA V
`In July 2025, Plaintiff The Sam Bernstein Law Firm, PLLC ("Bernstein") filed
`a motion to strike several of Defendant Samantha Maguire's affirmative defenses,
`and to dismiss her counterclaims. ECF No. 13. For the reasons stated below,
`Bernstein's motion is granted in part and denied in part. Maguire's counterclaims are
`dismissed without prejudice, and her Fourth and Fifth affirmative defenses are
`stricken.
`BACKGROUND
`The following background has been drawn from Bernstein's complaint. The
`factual allegations contained in the complaint have been accepted as true, and all
`reasonable inferences drawn in Bernstein's favor. See Menaker v. Hofstra Univ., 935
`F.3d 20, 26 (2d Cir. 2019).
`Bernstein describes itself as one of the leading personal injury law firms in the
`nation, representing over 100,000 clients from around the country. ECF No. 1 ,r 1. It
`started using the slogan CALL SAM in 1984, and now owns two federally registered
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`trademarks - (1) CALL SAM, and (2) 1-800-CALL-SAM- both of which have attained
`"incontestable" status. Id. ,r,r 2-3. The firm uses 1-800-CALL-SAM as its primary
`phone number, and has spent millions of dollars on advertisements using the CALL
`SAM mark to promote its brand in print media, on radio shows and television
`broadcasts, on its websites and social media, and through billboard advertising. Id.
`,r,r 4, 19, 30-31.
`Defendant Samantha Maguire is the founder and principal of Defendants
`Better Call Sam and The Law Office of Samantha Maguire. Id. ,r 38. In September
`2024, Defendants began promoting their legal services on Facebook by posting a
`message that read, in pertinent part, "Welcome to Better Call Sam, the Law Office of
`Samantha Maguire, PLLC! .... Remember, when you're in a jam, you Better Call
`Sam!" Id. ,r 39. In addition, Defendants' law firm domain name is "bettercallsam.net"
`and their website prominently features the "Better Call Sam" slogan. Id. ,r,r 41-42.
`Defendant Maguire has applied to register the trademark "BETTER CALL SAM IF
`YOU'RE IN A JAM, YOU BETTER CALL SAM!," and submitted a business card
`which uses "Better Call Sam" in multiple places. Id. ,r 46. Bernstein contacted
`Defendant Maguire soon after she began using the "Better Call Sam" slogan, but was
`unable to resolve the dispute amicably. Id. ,r 50.
`Therefore, in March 2025, Bernstein filed the instant complaint, alleging
`trademark infringement under both Section 32 and Section 43(a) of the Lanham Act
`against Defendants Better Call Sam, The Law Office of Samantha Maguire, PLLC,
`and Samantha Maguire. ECF No. 1. After Bernstein agreed to an extension for
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`Defendants to answer, Defendant Samantha Maguire, an attorney not presently
`admitted to practice before this Court, filed an answer on behalf of all Defendants.
`ECF No. 12. In addition to denying Bernstein's claims, Maguire's answer included
`several affirmative defenses and two counterclaims seeking declaratory judgment of
`non-infringement. Id. Bernstein's motion to strike several of the affirmative defenses
`and to dismiss Maguire's counterclaims are presently before the Court.
`MAGUIRE'S PRO SE STATUS
`At the outset, the Court must address an issue it raised in a prior order. In
`September 2025, the Court noted that the Second Circuit has made clear that "'a
`limited liability company ... may appear in federal court only through a licensed
`attorney."' ECF No. 14 (quoting Lattanzio v. COMTA, 481 F.3d 137, 140 (2d Cir.
`2007)). Indeed, the Circuit has stated that the attorney must be "licensed to practice
`law before our courts." Jones v. Niagara Frontier Transp. Auth., 722 F.2d 20, 22 (2d
`Cir. 1983). Under the Local Rules of this District, "only Members in good standing of
`the bar of this Court may appear as attorneys of record." Loe. R. Civ. P. 83.2.
`Accordingly, Defendant Maguire was advised in the Court's prior order that, to the
`extent that she seeks to represent Defendants BETTER CALL SAM and Samantha
`Maguire PLLC, she must verify her admission in this District. ECF No. 14.
`To date, despite attempts by the Clerk of Court to contact her, Maguire has
`failed to apply for or verify her admission in this District. Accordingly, the Court finds
`that she may not appear as attorney of record for Defendants BETTER CALL SAM
`and Samantha Maguire, PLLC. Thus, the answer and counterclaim filed in June 2025
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`[ECF No. 12] serves as a responsive pleading only on Maguire's behalf, and BETTER
`CALL SAM and Samantha Maguire, PLLC have not yet answered the complaint.
`Further, the Court observes that although a pro se litigant is typically afforded
`a "degree of solicitude" so as not to inadvertently forfeit certain rights, "a lawyer
`representing h[er]self ordinarily receives no such solicitude at all." Tracy v.
`Freshwater, 623 F.3d 90, 101 (2d Cir. 2010); see also Holtz v. Rockefeller & Co., 258
`F.3d 62, 82 n.4 (2d Cir. 2001) ("[P]ro se attorneys ... typically cannot claim the special
`consideration which the courts customarily grant to pro se parties." (internal
`quotations omitted)). Because Maguire maintains that she is a licensed attorney in
`the state of New York, the Court will not grant solicitude to Maguire due to her pro
`se status. See Bank v. Alarm.com Holdings, Inc., 828 F. App'x 5, 7 (2d Cir. 2020);
`Knopf v. Esposito, 803 F. App'x 448, 454 n.1 (2d Cir. 2020).
`LEGAL STANDARDS
`A. Trademark Infringement
`"To prevail on a trademark infringement claim under the Lanham Act, the
`plaintiff must show that: (1) plaintiff owns a valid protectable mark; and (2)
`defendant's use of a similar mark is likely to cause consumer confusion as to the origin
`or association of the goods or services." Vans, Inc. v. MSCHF Prod. Studio, Inc., 88
`F.4th 125, 135-36 (2d Cir. 2023) (citing Christian Louboutin S.A. v. Yves Saint
`Laurent Am. Holdings, 696 F.3d 206, 216-17 (2d Cir. 2012)).
`In regards to the first element, 15 U.S.C. § 1115(a) provides that registration
`of a trademark on the principal register of the United States Patent and Trademark
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`Office is prima facie evidence of the validity of the registered mark and "of the
`registrant's exclusive right to use the registered mark in commerce on or in
`connection with the goods or services specified in the registration subject to any
`conditions or limitations stated therein .... " 15 U.S.C. §1115(a). Further, to the
`extent that the right to use the registered mark has become incontestable under 15
`U.S.C. § 1065, the registration shall be conclusive evidence - as opposed to prima
`facie evidence - of exclusive rights to use the mark, and is subject to a much narrower
`range of defenses or defects. Id. § 1115(b).
`As to assessing the second element, the likelihood that an allegedly infringing
`product will create consumer confusion, the Second Circuit has prescribed the eight-
`factor test set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d
`Cir. 1961). See Vans, Inc., 88 F.4th at 136. The eight factors are:
`Id.
`(1) strength of the trademark; (2) similarity between the two marks; (3)
`proximity of the products and their competitiveness with one another;
`( 4) likelihood the prior owner may "bridge the gap" in the markets for
`their products; (5) evidence of actual consumer confusion; (6) the
`defendant's good faith in adopting its imitative mark; (7) quality of the
`defendant's product compared with the plaintiffs product; and (8)
`sophistication of the buyers. [Polaroid, 287 F.2d at 495.] Collectively,
`these factors establish whether the allegedly infringing product creates
`consumer confusion.
`B. Motion to Strike
`Under Rule 12(f) of the Federal Rules of Civil Procedure, "[t]he court may
`strike from a pleading an insufficient defense or any redundant, immaterial,
`impertinent, or scandalous matter." Fed. R. Civ. P. 12(f). "Motions to strike
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`affirmative defenses under Rule 12(f) are disfavored, and the standard for a plaintiff
`to prevail is demanding." Shunock v. Apple, Inc., 738 F. Supp. 3d 371, 377 (S.D.N.Y.
`2024) (citation omitted). In GEOMC Co. v. Calmare Therapeutics Inc., 918 F.3d 92
`(2d Cir. 2019) ("GEOMC'), the Second Circuit affirmed that a plaintiff seeking that
`relief must show that "(1) 'there is no question of fact which might allow the defense
`to succeed' when applying the 'plausibility' standard set by Bell Atlantic Corp v.
`Twombly, 550 U.S. 544 (2007); (2) 'there is no question of law which might allow the
`defense to succeed'; and (3) the plaintiff 'would be prejudiced by the inclusion of the
`defense."' S.E.C. v. Leibowitz, No. 25-cv-02155 (JLR), 2025 WL 2056026, at *3
`(S.D.N.Y. July 23, 2025) (citing GEOMC, 918 F.3d at 96-99).
`With respect to the first prong of GEOMC, factual sufficiency, the Twombly
`standard does not require a pleading's factual allegations to be "detailed," but they
`"must be enough to raise a right to relief above the speculative level." Twombly, 550
`U.S. at 555. In other words, while a pleading must be "more than labels and
`conclusions" and more than "a formulaic recitation of the elements of a cause of
`action," it must contain "only enough facts" as to make it "plausible on its face." Id.
`at 555, 570.
`With respect to the second prong of GEOMC, legal insufficiency, the courts
`have found that "the bar for so finding is a demanding one: a 'court may strike only
`those defenses so legally insufficient that it is beyond cavil that defendants could not
`prevail upon them."' Leibowitz, 2025 WL 2056026, at *8 (quoting Serby v. First Alert,
`Inc., 934 F. Supp. 2d 506, 516 (E.D.N.Y. 2013)). Finally, "[w]hether the third ...
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`factor[], prejudice, should be a basis for dismissing ... an otherwise valid affirmative
`defense will normally depend on when the defense is presented." GEOMC, 918 F.3d
`at 98. "Increased time and expense of trial may constitute sufficient prejudice to
`warrant striking an affirmative defense." Coach, Inc. v. Kmart Corps., 756 F. Supp.
`2d 421, 426 (S.D.N.Y. 2010). Nevertheless, a "factually sufficient and legally valid
`defense should always be allowed if timely filed even if it will prejudice the plaintiff
`by expanding the scope of the litigation." Id.
`C. Motion to Dismiss
`"A motion to dismiss counterclaims is governed by the well-known standard
`for determining a motion under Rule 12(b)(6) to dismiss for failure to state a claim
`upon which relief can be granted." Excellus Health Plan, Inc. v. Tran, 287 F. Supp.
`2d 167, 171 (W.D.N.Y.2003). That is, "counterclaims must meet the pleading
`requirements of Rule 8(a), as interpreted by [Twombly ] and [Ashcroft v. Iqbal, 556
`U.S. 662 (2009)], in order to survive a motion to dismiss pursuant to Federal Rule of
`Civil Procedure 12(b)(6)." Wi3, Inc. v. Actiontec Elecs., Inc., 71 F. Supp. 3d 358, 360-
`61 (W.D.N.Y. 2014) (citing Erickson Beamon Ltd. v. CMG Worldwide, Inc., No. 12
`CIV. 5105 NRB, 2014 WL 3950897, at *7 (S.D.N.Y. Aug. 13, 2014)).
`A claim must be dismissed under Rule 12(b)(6) "when the allegations in [the]
`complaint, however true, could not raise a claim of entitlement to relief . . . "
`Twombly, 550 U.S. at 578. Thus, to survive review under Rule 12(b)(6), a
`counterclaim "must contain sufficient factual matter, accepted as true, to 'state a
`claim to relief that is plausible on its face."' Iqbal, 556 U.S. at 678 (quoting Twombly,
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`550 U.S. at 570). "A claim has facial plausibility when the plaintiff pleads factual
`content that allows the court to draw the reasonable inference that the defendant is
`liable for the misconduct alleged." Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S.
`at 556). "Threadbare recitals of the elements of a cause of action, supported by mere
`conclusory statements" are insufficient. Iqbal, 556 U.S. at 678 (citing Twombly, 550
`U.S. at 555).
`DISCUSSION
`Maguire included SIX affirmative defenses m her answer to Bernstein's
`complaint: (1) failure to state a claim; (2) parody and First Amendment; (3) no
`likelihood of confusion; (4) laches, estoppel, and acquiescence; (5) unclean hands; and,
`(6) non-dilution/ weakness of mark. ECF No. 12 at 33-34. Bernstein argues that
`Maguire's second and part of the third, fourth, fifth, and sixth affirmative defenses
`should be stricken. ECF No. 13-1. It also argues that Maguire's two counterclaims
`should be dismissed.
`A. Second and Third Affirmative Defense: Parody & First Amendment
`In her second affirmative defense, Maguire maintains that her use of "Better
`Call Sam" is a protected expressive parody of a well-known fictional character, which
`qualifies as constitutionally-protected speech under the First Amendment and does
`not infringe Plaintiffs marks. ECF No. 12 at 33. In addition, a part of Defendant's
`third affirmative defense argues that her "branding is immediately recognizable as a
`cultural parody not associated with Plaintiff." Id. at 34. Plaintiff argues that these
`affirmative defenses should be stricken because parody is not an affirmative defense,
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`and Maguire's use of the mark is not entitled to First Amendment protection.
`At the outset, the Court notes that it shares Bernstein's skepticism that
`Maguire has plausibly alleged parody at all. See, e.g., Burck v. Mars, Inc., 571 F.
`Supp. 2d 446, 455 (S.D.N.Y. 2008) ("The Supreme Court has defined parody as 'the
`use of some elements of a prior author's composition to create a new one that, at least
`in part, comments on that author's works."') (quoting Campbell v. Acuff-Rose Music,
`Inc., 510 U.S. 569, 580 (1994)).
`Further, the Court agrees with Bernstein that '"[i]n a traditional trademark
`infringement suit founded on the likelihood of confusion rationale, the claim of parody
`is not really a separate 'defense' as such, but merely a way of phrasing the traditional
`response that customers are not likely to be confused as to source, sponsorship or
`approval."' Car-Freshner Corp. v. Getty Images, Inc., 822 F. Supp. 2d 167, 179 n.18
`(N.D.N.Y. 2011) (citing Schieffelin & Co. v. Jack Co. of Boca, 725 F. Supp. 1314, 1323
`(S.D.N.Y. 1989)); ECF No. 13-1. As the Ninth Circuit has observed:
`Some parodies will constitute an infringement, some will not. But the
`cry of 'parody!' does not magically fend off otherwise legitimate claims
`of trademark infringement or dilution. There are confusing parodies and
`non-confusing parodies. All they have in common is an attempt at humor
`through the use of someone else's trademark. A non-infringing parody
`is merely amusing, not confusing.
`Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir.
`1997) (quoting McCarthy on Trademarks, § 31.38[1], at 31-216 (rev. ed. 1995)).
`Accordingly, it would seem that the defense does not qualify as an affirmative
`defense. See Hallmark v. Cohen & Slamowitz, LLP, No. 11-CV-00842S-F, 2014 WL
`2028426, at *5 (W.D.N.Y. Sept. 15, 2014) (striking affirmative defenses where if
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`proven, plaintiffs would be unable to prove their claims).
`Nevertheless, it is not clear to the Court that Bernstein would be prejudiced by
`the time and expense of increased discovery and litigation on an issue likely to be
`litigated in any event. Although potentially redundant to any attempts Maguire
`might make to show Bernstein cannot satisfy the element of likelihood of confusion,
`it is not clear how Maguire's asserted parody affirmative defense will prejudice
`Bernstein at this point. Accordingly, Bernstein's motion to strike the second and third
`defenses is denied without prejudice at this time.
`D. Fourth Affirmative Defense: Laches, Estoppel, Acquiescence
`In her fourth affirmative defense, Maguire asserts, without explanation or
`support, that Bernstein's "claims are barred in whole or in part by the equitable
`doctrines of laches, estoppel, and/or acquiescence." ECF No. 12 at 34. She does not
`support any of these three defenses with factual allegations or legal justification.
`Plaintiff argues these defenses are "boilerplate affirmative defense[s] that [are]
`insufficiently pled." ECF No. 13-1 at 9. The Court agrees.
`i. Laches
`Laches "bars a claim when a defendant has suffered prejudice because of a
`plaintiffs unreasonable and inexcusable delay in bringing the claim." Coach, Inc. v.
`Kmart Corps., 756 F. Supp. 2d 421, 426-28 (S.D.N.Y. 2010) (citing Legislator 1357
`Ltd. v. Metro-Goldwyn-Mayer, Inc., 452 F. Supp. 2d 382, 391 (S.D.N.Y.2006)). In
`asserting laches, the defendant must establish that "(1) the plaintiff knew, or should
`have known, of his claim; (2) the plaintiff inexcusably delayed in taking action; and
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`(3) the defendants were prejudiced as a result." BJB Ltd. v. iStar Jewelry LLC, 533
`F. Supp. 3d 83, 95 (E.D.N.Y. 2021) (citation and internal quotation marks omitted).
`Despite Maguire's bare assertion here that Bernstein's claim is barred by
`laches, that defense lacks both legal and factual support. There is no indication in the
`pleadings that Bernstein delayed in bringing this action or that Maguire suffered any
`prejudice as a result of any conduct by Bernstein. Further, Bernstein initiated this
`suit in March 2025, less than two years from May 2023, the date Maguire listed as
`the "First Use Anywhere" date in her trademark application for "Better Call Sam if
`You're in a Jam, you Better Call Sam!" ECF No. 12 at 59. This is well within the six
`year period beyond which "there is a presumption of laches so that the trademark
`owner must show the inequity of dismissal on that basis." Excelled Sheepskin &
`Leather Coat Corp. v. Oregon Brewing Co., 897 F.3d 413, 419 (2d Cir. 2018). Thus,
`there is no question of fact or law that might allow a laches defense to succeed.
`Bernstein would also be prejudiced by the added time and expense required to litigate
`the issue. Maguire's affirmative defense of laches must therefore be stricken.
`ii. Estoppel
`The equitable principle of estoppel may be raised in a trademark infringement
`action if the defendant shows that "'(1) plaintiffs misleading communication, with
`plaintiffs knowledge of the true facts, prompted the defendant to infer that the
`plaintiff would not enforce its rights against the defendant; (2) the defendant relied
`on that conduct; and (3) the defendant would be prejudiced if the plaintiff were
`allowed to bring suit."' Rd. DawgsMotorcycle Club of the U.S., Inc. v. CuseRd. Dawgs,
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`Inc., 679 F. Supp. 2d 259, 279-80 (N.D.N.Y. 2009) (quoting Emmpresa Cubana Del
`Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 276 (S.D.N.Y. 2002). There are
`absolutely no facts alleged in Maguire's answer that could satisfy any of the first two
`elements. Therefore, because there is no question of fact or law that might allow an
`estoppel defense to succeed, and Bernstein would be prejudiced by the added time
`and expense required to litigate the issue, Maguire's affirmative defense of estoppel
`must be stricken.
`iii. Acquiescence
`Acquiescence is a defense to trademark infringement where the defendant can
`show that: (1) plaintiff actively represented that it would not assert a right or a claim;
`(2) the delay between the active representation and assertion of the right or claim
`was not excusable; and (3) the delay caused undue prejudice to defendant. Coach,
`Inc., 756 F. Supp. 2d at 426-28 (citing ProFitness Physical Therapy Center v. Pro-Fit
`Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62, 67 (2d Cir. 2002)). Similar
`to the estoppel defense, there are absolutely no facts alleged in Maguire's answer that
`could satisfy any of the first two elements of the acquiescence defense. Therefore,
`because there is no question of fact or law that might allow an acquiescence defense
`to succeed, and Bernstein would be prejudiced by the added time and expense
`required to litigate the issue, Maguire's affirmative defense of estoppel must be
`stricken.
`E. Fifth Affirmative Defense: Unclean Hands
`In her fifth affirmative defense, Maguire asserts the doctrine of "unclean
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`hands," claiming that Bernstein's assertion of exclusive rights to any variation of the
`phrase "Call Sam" is "overreach." ECF No. 12 at 34. Bernstein argues that Maguire's
`claim is not a valid basis to assert the doctrine of unclean hands. The Court agrees.
`"The doctrine of unclean hands [under federal law] is based on the principle
`that since equity tries to enforce good faith in defendants, it no less stringently
`demands the same good faith from the plaintiff." Alcon Vision, LLC v. Lens.com, Inc.,
`No. 1:18-CV-00407-NG-RLM, 2022 WL 1665453, at *9 (E.D.N.Y. May 25, 2022)
`(quoting Dunlop-McCullen v. Loe. 1-S, AFL-CIO-CLC, 149 F.3d 85, 90 (2d Cir. 1998)).
`Nevertheless, the fact that a party has brought a lawsuit in which the party seeks
`protection for trademark infringement, allegedly in bad faith, cannot be the basis of
`a defense of unclean hands, because the "'[u]nclean hands must relate to the getting
`or using the alleged trademark rights."' Yurman Design, Inc. v. Golden Treasure
`Imports, Inc., 275 F. Supp. 2d 506, 518 (S.D.N.Y. 2003) (citing Liz Claiborne, Inc. v.
`Mademoiselle Knitwear, Inc., 13 F. Supp. 2d 430, 445 (S.D.N.Y. 1998); Warner Bros.
`Inc. v. Gay Toys, Inc., 724 F.2d 327, 334 (2d Cir. 1983)).
`Here, Maguire does not allege any improper conduct by Bernstein in "getting
`or using" the trademark rights for CALL SAM. She alleges "unclean hands" only in
`the context of Bernstein's attempts to enforce his rights in his registered trademark
`in the instant litigation. Therefore, because there is no question of fact or law that
`might allow an unclean hands defense to succeed, and Bernstein would accordingly
`be prejudiced by the added time and expense required to litigate the issue, Maguire's
`affirmative defense of unclean hands must be stricken.
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`F. Sixth Affirmative Defense: Non-dilution /Weakness of Mark
`In her sixth affirmative defense, Maguire asserts that "[Bernstein]'s mark is
`geographically limited and not famous or distinctive in New York, especially in light
`of the parody context and [Bernstein]'s own founder's retirement." ECF No. 12 at 34.
`Bernstein argues that Maguire's claims in this regard are both irrelevant to its claims
`and an insufficient basis to preclude relief for trademark infringement.
`To establish a claim of dilution under the Federal Trademark Dilution Act
`("FTDA''), a plaintiff must show that:
`"(1) its mark is famous; (2) the defendant is making commercial use of
`the mark in commerce; (3) the defendant's use began after the mark
`became famous; and (4) the defendant's use of the mark dilutes the
`quality of the mark by diminishing the capacity of the mark to identify
`and distinguish goods and services."
`Savin Corp. v. Savin Grp., 391 F.3d 439, 449 (2d Cir. 2004) (quoting Pinehurst, Inc.
`v. Wick, 256 F. Supp. 2d 424, 431 (M.D.N.C. 2003)).
`By contrast, as noted above, to establish a claim of trademark infringement -
`as Bernstein alleges here - the plaintiff must show that (1) plaintiff owns a valid
`protectable mark, and (2) defendant's use of a similar mark is likely to cause
`consumer confusion as to the origin or association of the goods or services. Vans, Inc.,
`88 F.4th at 135-36. In evaluating likelihood of confusion, the reviewing court must
`consider, among other things, the strength of the mark, proximity of the product,
`likelihood prior owner may "bridge the gap" in the market, and evidence of actual
`confusion. Id.
`To be sure, trademark infringement and trademark dilution are two very
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`different claims. As such, evidence of neither famousness nor geographic limitation
`are elements of the trademark infringement claims presently before the Court.
`Nevertheless, the factors that the Court must consider with respect to likelihood of
`confusion of the trademark infringement claim overlap to some degree with the
`elements of dilution. For instance, the Court must consider the proximity of the
`products and evidence of actual confusion, both of which require the court to "evaluate
`the likely effect on consumers of the marks' similar and dissimilar features with a
`focus on market conditions, even if the products appear to be adequately different in
`a non-marketplace setting." Louis Vuitton Malletier v. Burlington Coat Factory
`Warehouse Corp., 426 F.3d 532, 539 (2d Cir. 2005).
`In short, although potentially redundant to any attempts Maguire might make
`to show Bernstein cannot satisfy the element of likelihood of confusion, it is not clear
`how Maguire's asserted "Non-Dilution/Weakness of Mark" affirmative defense will
`prejudice Bernstein at this point. Accordingly, the motion to strike this defense is
`denied without prejudice at this time.
`G. Maguire's Counterclaims
`In her two counterclaims, Maguire seeks declaratory judgments of non­
`infringement on the basis that there is no likelihood of confusion and her use of the
`mark is a parody, and on the basis that her use is a protected non-commercial or
`expressive fair use / parody under the Lanham Act and the First Amendment. ECF
`No. 12 at 34-35. Bernstein observes that Maguire fails to support her two
`counterclaims with specific factual allegations, leaving only bald assertions of legal
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`conclusions. Further, Bernstein argues that even based on facts alleged throughout
`Maguire's answer, her two counterclaims fail to state a plausible claim because the
`facts that Maguire does allege indicate that she is using the mark in a commercial
`context. See, e.g., Jack Daniel's Props., Inc., 599 U.S. at 159 (quoting Yankee
`Publishing Inc. v. News Am. Publishing Inc., 809 F. Supp. 267, 276 (S.D.N.Y. 1992)
`("'the trademark law generally prevails over the First Amendment' when 'another's
`trademark (or a confusingly similar mark) is used without permission' as a means of
`'source identification."').
`Two factors figure keenly in the Court's consideration of Bernstein's motion to
`dismiss Maguire's counterclaims. First, despite ample opportunity to do so,1 Maguire
`has failed to respond to Bernstein's motion to dismiss her counterclaim in any
`fashion. See, e.g., Duffy v. WM Res., Inc., No. 24-CV-6486-FPG, 2025 WL 219107, at
`*2 (W.D.N.Y. Jan. 16, 2025) (citing United States v. Weathers, No. 22-CV-243S, 2024
`WL 3431054, at *11 (W.D.N.Y. July 16, 2024) ("Typically, a plaintiffs failure to
`respond to a motion to dismiss constitutes a waiver of any argument· the plaintiff
`might have raised.").
`Second, as the Second Circuit has recognized, the district court has broad
`discretion to decline jurisdiction under the Declaratory Judgment Act ("DJA''), 28
`U.S.C. § 2201, based on its consideration of the following factors:
`(1) whether the [declaratory] judgment [sought] will serve a useful
`purpose in clarifying or settling the legal issues involved; (2) whether
`1 See, e.g., the Court's text order at ECF No. 14, which extended Maguire's time to respond, despite
`her failure to respond to Bernstein's motions to strike and dismiss (ECF No. 13), and the Clerk's
`Office's attempts to verify her admission in this district. More than 3 months have elapsed since that
`extension.
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`[such] a judgment would finalize the controversy and offer relief from
`uncertainty; (3) whether the proposed remedy is being used merely for
`procedural fencing or a race to res judicata; (4) whether the use of a
`declaratory judgment would increase friction between sovereign legal
`systems or improperly encroach on the domain of a state or foreign court;
`(5) whether there is a better or more effective remedy, ... ; and (6)
`whether concerns for judicial efficiency and judicial economy favor
`declining to exercise jurisdiction ....
`Admiral Ins. Co. v. Niagara Transformer Corp., 57 F.4th 85, 99-100 (2d Cir. 2023)
`(internal quotation marks and citations omitted). "Inherent in district courts' broad .
`. . discretion to decline jurisdiction under the DJA ... is a similarly broad discretion
`to weigh the factors" the Second Circuit has enumerated. Id. at 100 (internal
`quotation marks and citation omitted). "[N]o one factor is sufficient, by itself, to
`mandate that a district court exercise - or decline to exercise - its jurisdiction to issue
`a declaratory judgment." Id.
`Here, the Court has thoroughly considered each of the factors identified by the
`Second Circuit as relevant to the decision to decline jurisdiction under the DJA, and
`finds good cause to decline jurisdiction to consider Maguire's counterclaims for
`declaratory judgment in the instant case. Of particular import, the Court notes that
`the resolution of Bernstein's two trademark infringement claims will also serve the
`purpose of clarifying whether and to what extent Maguire's mark infringes upon
`Bernstein's, which renders the counterclaims redundant. See, e.g., Continuum Grp.
`LLC v. 666 Performance, LLC, No. 24 CIV. 5834 (LGS), 2025 WL 1489255, at *2
`(S.D.N.Y. May 23, 2025) ("the Counterclaim's request for declaratory relief of non­
`infringement "is entirely duplicative of [TCG's] [trademark infringement] claim --and
`any resolution of the merits of [TCG's] claim will necessarily resolve [666P's]
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`counterclaim."). Additionally, the Court finds that concerns for judicial efficiency and
`judicial economy favor declining jurisdiction. See, e.g., Bank v. NFL Props. LLC, No.
`25-CV-3981 (CM), 2025 WL 2961849, at *7 (S.D.N.Y. Oct. 20, 2025), reconsideration
`denied, No. 25-CV-3981 (CM), 2025 WL 3090126 (S.D.N.Y. Nov. 5, 2025) (finding
`judicial economy is not served by considering a declaratory judgment action because
`"the proper way of the proper way of dealing with trademark disputes" is through a
`lawsuit for trademark infringement).
`Maguire's counterclaims are therefore dismissed without prejudice.
`CONCLUSION
`For the foregoing reasons, it is hereby ORDERED that Plaintiff Sam Bernstein
`Law's motion to strike [ECF No. 13] is granted in part and denied in part; and
`Defendant Samantha Maguire's Fourth and Fifth Affirmative Defenses [ECF No. 12]
`are STRICKEN; and it is furtherORDERED that Plaintiff Sam Bernstein Law's
`motion to dismiss Defendant Maguire's counterclaims is GRANTED to the extent
`that the Court opts to exercise its discretion to decline jurisdiction over Defendant
`Maguire's counterclaims for declaratory judgment under the Declaratory Judgment
`Act, and dismisses the counterclaims without prejudice.
`This matter will be referred to a Magistrate Judge for pretrial matters by
`separate order.
`Dated:
`SO ORDERED.
`January _8_, 2026
`Rochester, New York ~ffi ~ HON.MEREDITH A. VACCA
`United States District Judge
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