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

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-MAV
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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