govinfo:USCOURTS-ctd-3_20-cv-01056-0

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
BBAM Aircraft Management, LP, 
and BBAM US LP,
Plaintiffs,
v.
Babcock & Brown LLC, 
Burnham Sterling & Company LLC, 
Babcock & Brown Securities LLC,
and Babcock & Brown Investment  
Defendants.
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No. 20-cv-1056-VLB
September 29, 2021
MEMORANDUM OF DECISION DENYING DEFENDANT’S MOTION TO DISMISS
[Dkt. 39]
BBAM Aircraft Management LP and BBAM US LP (collectively “BBAM” or 
“Plaintiffs”) bring this action agains t Babcock & Brown LLC, Babcock & Brown 
Securities LLC, Babcock & Brown Inves tment Management LLC, and Burnham 
Sterling & Company LLC (collectively “Babcock & Brown LLC” or “Defendants”),
alleging trademark infringement, unfair competition, and false advertising under 
the Lanham Act as well as state and common law trademark and unfair competition 
claims. [Am. Compl., Dkt. 32].  Plaintiffs’ operative complaint seeks cancellation of 
Defendants’ registered trademarks and refusal of Defendants’ pending trademark 
application. [ Id.].  
Before the Court is Defendants’ motion to dismiss all claims pursuant to 
Rule 12(b)(6) of the Federa l Rules of Civil Procedure, in which Defendants argue 
that all of Plaintiffs’ claims fail to stat e a claim upon which relief can be granted.  
[Mot., Dkt. 39].  Plaintiffs oppose.  [Opp., Dkt. 43].  
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For the following reasons, Defendants’ m otion to dismiss is DENIED.  
I. BACKGROUND1
A. Plaintiffs
Plaintiffs are an aircraft leasing and management company.  [Am. Compl. at 
¶ 13].  Over the years, Plaintiff has been restructured and renamed. In 1989 or early 
1990, Plaintiffs operated as a division of  Babcock & Brown LP, an international 
investment advisory limited partnership.   [ Id. at ¶ 15].  In 1992, Babcock & Brown 
LP incorporated Plaintiff under the name  Babcock & Brown Aircraft Management, 
Inc. [ Id.].  In 2001, Plaintiffs registered the BBAM word mark, Reg. No. 2,424,139, 
covering “lease business management, purchasing agent and commercial 
information agency, concerning leased assets, namely aircrafts.”  [Id. at ¶ 17].  
In 2010, Babcock & Brown LP sold substantially all of the assets of its 
subsidiary Babcock & Brow n Aircraft Management, Inc.  to Plaintiffs’ current 
owners.  [ Id. at ¶ 16].  Thereafter, Plaintiffs converted Babcock & Brown Aircraft 
Management, Inc. to a limited partners hip and changed the corporate name to 
Babcock & Brown Aircraft Management LP.  [ Id.].  Through the 2010 asset 
acquisition, Plaintiffs acquired ownership of the entire aircraft leasing business of 
Babcock & Brown and all assets of the Babcock & Brown Aircraft Management 
division, including the then existing leases and asset management relationships 
with major airlines, the exclusive joint marketing relationship with a third-party 
licensor, current employment contracts and relationships, physical assets, and 
1 For the purposes of the motion to dismiss, the Court accepts the well-pleaded 
factual allegations made within Plaintiffs’ amended complaint as true.  See infra.
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web domains.  [ Id. at ¶  16].  In addition, Babcock & Brown agreed that Plaintiffs 
would have exclusive use of the Babco ck & Brown name in the aviation field
(“BABCOCK & BROWN marks”).  [Id.]. 
Shortly after the acquisition, in 2011, BBAM registered a BBAM logo,2 which 
is the word BBAM with the “A” styled to look like the tail of an airplane.  [ Id. at ¶ 
17].  The BBAM logo registration covers “business management, purchasing
agents and commercial information in the field of aircrafts.”  [Id.].  
Plaintiffs allege they have used the BABCOCK & BROWN marks 
continuously for more than 30 years throughout the United States.  [Id. at ¶ 18].  In 
establishing continuous use, Plaintiffs state they have used the Babcock & Brown 
name (1) directly, (2) through its subsidia ry and related companies, and (3) via a 
joint-marketing partnership with a Japan-based corporation, Nomura Babcock & 
Brown.   [Id.].  
With respect to direct use, Plaintiffs’ website uses the BABCOCK & BROWN 
marks throughout and Plaintiffs use the marks in advertising.  [Id. at ¶¶ 20–21]. In 
addition, Plaintiffs allege that the avia tion industry, including Plaintiffs’ target 
customers, understand that BBAM is an abbreviation of Babcock & Brown Aircraft 
Management and associates the name with the BABCOCK & BROWN marks.  [ Id. 
at ¶ 1].  
Plaintiffs’ use the BABCOCK & BRO WN marks through its affiliated 
company, Fly Leasing Limited (“Fly”).  [ Id. at ¶ 22].  Fly is a NYSE-listed aircraft 
2 The BBAM logo and the BBAM word mark are to be referred to collectively as 
the BBAM marks. 
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lessor with a portfolio of 113 aircrafts that are exclusively managed by Plaintiffs. 
[Id.].  Plaintiffs have authorized Fly to us e the BABCOCK & BROWN marks and Fly 
does use the marks.  [ Id.]   Fly holds a number of aircraft leasing entities and 
investment vehicles that operate under the Babcock & Brown and B&B name.  [Id.].  
For exampl
e, Fly has entities nam ed Babcock & Brown Air Funding I Limited, 
Babcock & Brown Air Acquisition I Limited, B&B Air Funding 888 Leasing Limited, 
and other similar names.  [Id.].   
Plaintiffs also use the mark in its joint-marketing partnerships. Plaintiffs use 
the
 BABCOCK & BROWN marks through an exclusive co-marketing partnership 
with Nomura B
abcock & Brown.  [ Id. at ¶ 25].  Nomura Babcock & Brown is a 
Japanese investment  company specializing in international aircraft leasing.  [Id. at 
¶ 25].  This partnership is marketed by P laintiffs to potential customers.  [ Id. at ¶ 
26].  The agreement with Nomura Babcock & Brown licenses Nomura Babcock & 
Brown to use “Babcock & Brown” or “B&B” in connect
 ion with joint transactions. 
[Id. at ¶ 27].  By agreement, Plaintiffs can terminate Nomura Babcock & Brown’s 
license to use the marks.  [Id.].  
 B.
 Defendants
 After BBAM  was  acquired in 2010, Michael Dickey Morgan—a former 
Babcock & Brown
 executive—co-founded Burnham Sterling, an aircraft advisory 
company
 that also leases aircrafts. [Id. at ¶¶ 29–30]. I n 2016, Burnham Sterling 
filed for the trademark “Burnham Babcock & Brown” for use in connection with 
investment
 banking and various types of financing and leasing. [ Id. at ¶ 30]. As of 
the filing of the amended complaint, the application remains pending.  [Id.].  
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In or around 2013, B&B Securities was formed under the name Burnham 
Sterling 
Securities LLC, which later changed its named to Babcock & Brown 
Securities LLC in or around December 2019.  [ Id. at ¶ 35].  B&B Securities is a 
registered broker-dealer specializing in the sale of unregistered private investment 
funds, and provides mergers and acquisitions advisory services.  [ Id.].  Plaintiffs 
believe B&B Securities has used BABCOCK & BROWN marks in connection with 
the conduct of its business in the aircraft industry.  [Id. at ¶ 36].  
In or around November 2014, Morgan formed B&B LLC.  [Id. at ¶ 38].  B&B 
LLC has several registered word marks, including: (1) “B & B” for “investment 
management” in Class 36
3, (2) “B & B” for “investment banking; financial
consultation, financial analysis; capital investment and private equity fund 
management; and financial advisory services in the fields of asset-backed 
financing, project fi nancings, leveraged leases, sale leasebacks, portfolios of 
leased or financed assets, secured debt, tax-advantaged financings, financial 
advisory services in the fields of financing equipment purchasing, financing 
equipment leasing, and financial equipm ent sales” in Class 36, (3) “BABCOCK & 
BROWN” for “investment management” in Class 36, and (4) “BABCOCK & 
BROWN” for “investment banking; financ ial consultation; financial analysis; 
capital investment and private equity fund management; and financial advisory 
services in the fields of asset-backed financings, project financings, leveraged 
leases, sale leasebacks, portfolios of leased or financed assets, secured debt, tax-
3 Class 36 includes “[f]inancial, monetary and banking services; insurance 
services; real estate affairs.” 37 C.F.R. § 6.1
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advantaged financings; financial advisory se rvices in the fields of financing 
equipment purchasing, financing equipmen t leasing, and fi nancing equipment 
sales” in Class 36.
In or around December 2015, Morgan formed B&B Investment Management. 
[Id. at ¶ 42].  
C. Allegations of the Complaint
The amended complaint brings ten claims for relief: (1) trademark 
infringement under 15 U.S.C. § 1114(1) against all Defendants, (2) false designation 
of origin, affiliation, connection, or sponsorship under 15 U. S.C. § 1125(a)(1)(A) 
against all Defendants, (3 ) Connecticut common law trademark infringement 
against all Defendants, (4) false advertising under 15 U.S.C. § 1125(a)(1)(B) against 
all Defendants, (5) state and common law unfair competition against all 
Defendants, (6) cancellation of B&B LLC’s “B&B” word mark, Reg. No. 5,851,855, 
(7) cancellation of B&B LLC’s  “B&B” word mark, Reg. No. 6,037,338, (8)
cancellation of B&B LLC’s “BABCOCK & BROWN” word mark, Reg. No. 5,643,846, 
(9) cancellation of B&B LLC’s “BABCOCK & BROWN” word mark, Reg. No.
5,769,928, and (10) refusal of Burnham Sterling’s trademark application of the 
“BURNHAM BABCOCK & BROWN” word mark, Application No. 86/874,191.  
II. LEGAL STANDARD
“‘To survive a motion to dismiss, a complaint must contain sufficient factual 
matter, accepted as true, to state a claim to relief that is plausible on its face.’” 
Sarmiento v. U.S., 678 F.3d 147 (2d Cir. 2012) (quoting Ashcroft v. Iqbal, 556 U.S. 
662, 678 (2009)). While Rule 8 does not require detailed factual allegations, “[a] 
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pleading that offers ‘labels and conclusi ons’ or ‘formulaic recitation of the 
elements of a cause of action will not do.’ Nor does a complaint suffice if it tenders 
‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556 U.S. at 
678.
“Where a complaint pleads facts that are ‘merely consistent with’ a 
defendant's liability, it ‘stops short of th e line between possibility and plausibility 
of ‘entitlement to relief.’” Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557
(2007)). “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.” Id.
In considering a motion to dismiss for failure to state a claim, the court 
should follow a “two-pronged approach” to evaluate the sufficiency of the 
complaint. Hayden v. Paterson , 594 F.3d 150, 161 (2d Cir. 2010). “A court ‘can 
choose to begin by identifying pleadings that, because they are no more than 
conclusions, are not entitled to the assumption of truth.’” Id. (quoting Iqbal, 556 
U.S. at 679). “At the second step, a court should dete rmine whether the ‘well-
pleaded factual allegations,’ assumed to be true, ‘plausibly give rise to an 
entitlement to relief.’” Id. (quoting Iqbal, 556 U.S. at 679). “The plausibility standard 
is not akin to a probability requirement, but it asks for more than a sheer possibility 
that a defendant has acted unlawfully.” Iqbal, 556 U.S. at 678 (internal quotations 
omitted).
In general, the court's review on a motion to dismiss pursuant to Rule 
12(b)(6) “is limited to the facts as asserted within the four corners of the complaint, 
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the documents attached to the comp laint as exhibits, and any documents 
incorporated in the complaint by reference.” McCarthy v. Dun & Bradstreet Corp.,
482 F.3d 184, 191 (2d Cir. 2007). The court may also consider “matters of which 
judicial notice may be taken” and “documents either in plaintiffs' possession or of 
which plaintiffs had knowledge an d relied on in bringing suit.” Brass v. Am. Film
Techs., Inc., 987 F.2d 142, 150 (2d Cir. 1993); Patrowicz v. Transamerica HomeFirst, 
Inc., 359 F.Supp.2d 140, 144 (D. Conn. 2005).
III. DISCUSSION
A. Count 1: Trademark Infringeme nt under 15 U.S.C. § 1114(1)
Count one of the amended complaint al leges trademark infringement under 
15 U.S.C. § 1114(1) against all Defendants for the use of the BABCOCK & BROWN 
marks as it relates to Plaintiffs’ registered BBAM marks.  Plaintiffs generally allege 
that they have a valid and incontestable ownership in the BBAM marks, the
Defendants’ use the BABCOCK & BROWN marks in commerce, and such use is 
confusingly similar to the BBAM marks so as to infringe on Plaintiffs rights.  
Defendants argue count one should be dismissed because Plaintiffs have 
failed to plead facts plausibly showing infringement of the BBAM mark under 15 
U.S.C. § 1114(1).
Under 15 U.S.C. § 1114(1): 
(1) Any person who shall, without the consent of the registrant--(a) use 
in commerce any reproduction, c ounterfeit, copy, or colorable 
imitation of a registered mark in connection with the sale, offering for 
sale, distribution, or advertising of any goods or services on or in 
connection with which such use is likely to cause confusion, or to 
cause mistake, or to deceive; or (b) r eproduce, counterfeit, copy, or 
colorably imitate a registered ma rk and apply such reproduction, 
counterfeit, copy, or colorable imitation to labels, signs, prints, 
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packages, wrappers, receptacles or advertisements intended to be 
used in commerce upon or in connection with the sale, offering for 
sale, distribution, or advertising of goods or services on or in 
connection with which such use is likely to cause confusion, or to 
cause mistake, or to deceive, shall be liable in a civil action by the 
registrant for the remedies hereinafter provided. 
Trademark infringement claims are analyzed in two stages: first the court should 
inquire whether the mark “merits protection,” and second, the court should inquire 
whether the allegedly infringement use of the mark is “likely to cause consumer 
confusion.”  Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 
F.3d 206, 224 (2d Cir. 2012). Defendants concede Plaintiffs BBAM marks merit 
protection, thus the issue is whether Defendants’ use of the BABCOCK & BROWN 
marks is likely to cause consumer confusion.  
Courts have held that a “[p]laintiff need not ‘prove confusion at the motion 
to dismiss stage”; Pulse Creations, Inc. v. Vesture Grp., Inc. , 154 F. Supp. 3d 48, 
55 (S.D.N.Y. 2015); because “likelihood of confusion is a fact-intensive analysis 
that ordinarily does not lend itself to a motion to dismiss.”  Id. (citing to Van 
Prenagh v. Gratton, 993 F. Supp. 2d 293, 3030 (E.D.N.Y. 2014)).  See also The 
Coustea Society Inc. v. Cousteau, 498 F. Supp. 3d 287, 309 (D. Conn. 2020).  
The fact intensive analysis requires consideration of several variables, 
including:  “the strength of his mark, th e degree of similarity between the two 
marks, the proximity of the products, the likelihood that the prior owner will bridge 
the gap, actual confusion, and the reciprocal of defendant's good faith in adopting 
its own mark, the quality of defendant's product, and the sophistication of the 
buyers. Even this extensive catalogue does not exhaust the possibilities—the court 
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may have to take still other variables into account.”  Polaroid Corp. v. Polarad 
Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).   
Given the array of considerations, analysis of which is highly fact intensive, 
Plaintiff’s hurdle for pleading the likelihood of confusion is exceedingly low.
Scotch & Soda B.V. v. Scotch & Iron LLC, No. 1:17-CV-04561 (ALC), 2018 WL 
2224997, at *3 (S.D.N.Y. May 15, 2018). Due to the nature of the standard, “[a] 
motion to dismiss will be granted for failure to plead likelihood of confusion only if 
‘no reasonable factfinder could find a like lihood of confusion on any set of facts 
that plaintiff could prove.’” Id. Where Plaintiff “cannot possibly show confusion 
as to source or sponsorship” claims can be dismissed as a matter of law. Roberts 
v. Bliss, 229 F. Supp. 3d 240, 251 (S.D.N.Y. 2017). “In the context of a motion to 
dismiss, courts have disposed of trademark claims where simply looking at the 
work itself, and the context in which it appears, demonstrates how implausible it is 
that a viewer will be confused into believing that the plaintiff endorsed the 
defendant's work.” Id.  
Defendants argue that the registered BBAM marks differ dramatically from 
the BABCOCK & BROWN and B&B marks.  Plai ntiffs oppose, arguing that the 
likelihood of confusion should not be adj udicated at the motion to dismiss stage 
because it is a fact-intensive inquiry.  In  addition, Plaintiffs argue that the marks 
are similar given that BBAM is a known abbreviation of Babcock & Brown Aircraft 
Management.  
The Court agrees with Plaintiffs and finds that at this stage of the proceeding, 
likelihood of confusion is sufficiently pled.  As alleged in the amended complaint, 
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BBAM is a known abbreviation of Babcock & Brown Aircraft Management.  Thus, 
the BBAM mark includes a connection to the BABCOCK & BROWN marks.  It is not 
so implausible to find a likelihood of confusion based on these allegations, at least 
for the purposes of adjudicating a motion to dismiss.  
Therefore, the Court denies Defendants’ motion to dismiss the first count of 
the complaint.   
B. Count 2: False Designation of Or igin, Affiliation, Connection, and 
Sponsorship under § 1125(a)(1)(A). 
Count 2 of the amended complaint alleges that Defendants have violated 15 
U.S.C. § 1125(a)(1)(A) in that Plaintiffs have senior and continuous use of the 
BABCOCK & BROWN marks over Defendants use, that Defendants attempt to 
register BURNHAM BABCOCK & BROWN is c onfusingly similar to the BABCOCK 
& BROWN and BBAM marks.  
Defendants argue that Plaintiffs have failed to assert a plausible Lanham Act 
claim because Plaintiffs have not adequately pled that they have a valid mark 
entitled to protection. [Mot., Dkt. 40 at 12–13].  Defendants contend the uses of the 
BABCOCK & BROWN mark in Plaintiffs’ amended complaint are not sufficient to 
constitute a use in commerce and therefore Plaintiffs have no right to exclusive 
use of the marks. [ Id. at 13]. Specifically, Defendants allege that Plaintiffs’ use 
through Nomura Babcock & Brown and Fly does not establish a valid mark entitled 
to protection.  Plaintiffs oppose, arguing that Defendants wrongfully limit Plaintiffs’ 
use, as alleged in the complaint, to the use through Nomura Babcock & Brown and 
Fly, because the complaint alleges direct use as well.  Plaintiffs further argue that 
if the affiliate connections were the only basis, they do sufficiently establish a valid 
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mark.  In response, Defendant s argue that Plaintiffs’ claims of direct commercial 
use are conclusory statements not entitled to an assumption of truth.  
As stated above, the first stage of inquiry into a trademark infringement 
claim requires consideration of whether the mark “merits protection.”  Christian 
Louboutin S.A., 696 F.3d at 224. “The right to exclusive use of a trademark derives 
from the use in commerce of the mark, rather than from the mark's mere adoption.”
15 U.S.C. § 1125; United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).
The Lanham Act defines “use in commerce” as the “bona fide use of a mark in the 
ordinary course of trade, and not made me rely to reserve a right in a mark.” 15 
U.S.C. § 1127. “The talismanic test is whether or not the mark was used in a way 
sufficiently public to identify or distingu ish the marked goods [or services] in an 
appropriate segment of the public mind as those of the adopter of the mark.” Int'l 
Healthcare Exch., Inc. v. Global Healthcare Exch., LLC , 470 F. Supp. 2d 365, 371 
(S.D.N.Y. 2007).
Here, the issue is whether Plaintiffs were required to plead more factual 
allegations to establish their use of the BABCOCK & BROWN marks in commerce 
aside from that which has been alleged in the complaint.  This case is similar to 
that in Anthem Sports, LLC v. Under the Weather, LLC , 320 F. Supp. 3d 399 (D. 
Conn. 2018), where the plaintiff alleged in its complaint that it “began offering” 
products under the tradename at issue be fore the defendant s alleged use.  Id. at 
416.  The court found this allegation suffi ciently alleged use of the mark in 
commerce over the defendant’s objection, where it argued more facts needed to be 
alleged.  Id. at 416–17. The court stated that  the additional information the 
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defendant sought—such as the date it adopted  the mark, the date of its first sale 
using that mark, and records of its sale to customers—“extends beyond the 
requires of a well-pleaded complaint.”  Id. at 417.  
Similar to the holding in Anthem Sports and the case law discussed above 
in Part III.A, Plaintiffs have sufficiently alleged use in commerce of the BABCOCK 
& BROWN marks.  This is true even if the use of the marks does not include the 
affiliate and joint venture uses because Plai ntiffs allege that “it has continuously 
conducted business under the Babcock & Brown name directly, . . . .”  [Am. Compl. 
at ¶ 18]. The allegations of use in commerce are sufficient to put the Defendants 
on notice of the bases upon which Plaintiff in tends to prove “in use” ownership.  
This is not a “conclusory allegation” as Defendants allege, nor does it implausibly 
support Plaintiffs’ claims.  Defendants have been put on notice that Plaintiffs intend 
to satisfy their burden of establishing “use in commerce” by showing direct use 
by Plaintiffs.  Defendants desire for more factual allegations seeks to set a precent 
that would unreasonably and untenably require plaintiffs to allege specific uses of 
a challenged mark to sufficiently allege “use in commerce.”  That reaches beyond 
what Rule 8, Twombly and Iqbal require. 
To the extent Defendants are arguing that these allegations are insufficient 
to raise a Lanham Act claim because some heightened pleading standard should 
apply, Defendants have provided no legal basis for such a conclusion.  To the 
contrary, while some authorities “differ as to whether [the Rule 9] heightened 
pleading standard applies to Lanham Act claims . . . [t]he issue has not been 
addressed by the Second Circuit, nor does it appear that any other federal appellate 
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court has reviewed the question of the applicability of Rule 9(b) to a Lanham Act 
claim.”  Sussman-Automatic Corp. v. Spa World Corp. , 15 F. Supp. 3d 258, 265 
(E.D.N.Y. 2014) (internal citations omitted).  Courts in this circuit that have 
addressed this issue have declined to impose a heightened pleading standard.  Id.;
N. Am. Olive Oil Ass’n v. D’Avolio Inc., 457 F. Supp. 3d 207, 229 n.9 (E.D.N.Y. 2020) 
(analyzing “the sufficiency of the compla int under the pleading standard of Rule 
8(a) rather than Rule 9(b)). This conclusion is supported by the reasoned decision 
of the Third Circuit in UHS of Del., Inc. v. United Health Servs., 2013 U.S. Dist. LEXIS
43921.
Therefore, the Court denies Defendants’ motion to dismiss count two of the 
amended complaint.  
C. Count 3: Connecticut Comm on Law Trademark Infringement
Count three of the amended complain t alleges Connecticut common law 
trademark infringement under the same general allegations as counts one and two.  
“The test for trademark infringement … u nder Connecticut law is identical to the 
test under the Lanham Act.”  Verilux, Inc. v. Hahn , No. 3:05CV254(PCD), 2007 WL 
2318819, at *10 (D. Conn. 2007). Defendants argue that the Connecticut common 
law trademark infringement claim should be dismissed for the same reasons raised 
in Defendants’ efforts to dismiss count two. However, the Court has not dismissed 
the federal trademark infringement claim and thus Defendants’ only argument fails.  
Therefore, the Court denies Defendants’ motion to dismiss count three of the 
amended complaint.  
D. Count 4: False Advertising un der 15 U.S.C. § 1125(a)(1)(B)
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Count four of the amended complaint alleges false advertising in violation of 
15 U.S.C. § 1125(a)(1)(B) against all Defendants.  Plaintiff alleges that the use of the 
name “Babcock & Brown” falsely and/or misleadingly represents that there is a 
continuation, sponsorship, or affiliation between Defendants and their goods and 
services on the one hand and Babcock & Brown LP and BBAM on the other hand, 
where no such relationship exists.  Plaint iffs further allege that Defendants’ 
conduct has caused or is likely to cause Pl aintiffs to lose business opportunities 
and damage Plaintiffs’ reputation in the aircraft management and leasing industry.  
“A claim of false advertising may be based on at least one of two theories: 
‘that the challenged advertisement is literally false, i.e., false on its face,’ or ‘that 
the advertisement, while not literally false, is nevertheless likely to mislead or 
confuse consumers.’” Tiffany (NJ) Inc. , 600 F.3d at 112 (quoting Time Warner 
Cable, Inc. v. DIRECTV, Inc. , 497 F.3d 144, 153 (2d Cir. 2007)).  Additionally, a 
plaintiff must prove that the challenged advertisement is “the cause of actual or 
likely injury to the plaintiff.” Church & Dwight Co. v. SPD Swiss Precision 
Diagnostics, GmBH , 843 F.3d 48, 65 (2d Cir. 2016) (citing Merck Eprova AG v. 
Gnosis S.p.A., 760 F.3d 247, 255–56 (2d Cir. 2014)).  “[W]here the statement at issue 
is not literally false, however, a plaintiff ‘must demonstrate, by extrinsic evidence, 
that the challenged [advertisements] tend to mislead or confuse consumers,’ and 
must ‘demonstrate that a statistically significant part of the commercial audience 
holds the false belief allegedly communicat ed by the challenged advertisement.’”  
Tiffany (NJ) Inc. v. eBay Inc., 600 F. 3d 93 ,112–13. 
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Defendant argues that count four shoul d be dismissed because Plaintiffs’ 
only allegation of false advertising relates to a statement that is true and Plaintiffs 
have not sufficiently alleged that a statistically significant part of the commercial 
audience holds the false belief allegedly communicated.  Defendants claim the only 
challenged advertisement is from Burnham Sterling’s website, which states: “[t]he 
traditional aircraft advisory activities formerly offered by Babcock are not offered 
by Burnham Sterling.”  [Am. Compl. at ¶ 19].  Defendant argues that the contested 
statement is true based on Plaintiffs’ own complaint, which identifies Burnham 
Sterling as “an aircraft advisory company that offers a range of service, including 
aircraft leasing, financial analysis, and leasing portfolio management services.”  
[Am. Compl. at ¶ 19]. 
Plaintiffs oppose, arguing that De fendants have mischaracterize the 
amended complaint as only alleging false ad vertising with respect to that single 
website excerpt, and Defendants disregard the allegations related to their false and 
misleading use of the Babcock & Brown name. 
The Court agrees with Plaintiff that Defendants have improperly limited the 
false advertising claim, which was raised against all Defendants, to the one 
statement found on Burnham Sterling’s webs ite.  Rather, Plaintiffs’ complaint 
raises a false advertising claim relating to all Defendants use of Babcock & Brown 
in commerce, not just the one statement on Burnham Sterling’s website.  
Regardless, even the one statement on th e website is enough to establish a false 
advertising claim because Plaintiff is alleging that using the terms “formerly 
offered by” is false and/or misleading because no such relationship exists.  
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Therefore, the Court denies Defendants’ motion to dismiss count four of the 
amended complaint. 
E. Count Five: State and Comm on Law Unfair Competition 
Count five of the amended complaint raises state and common law unfair 
competition against all Defendants. Specifi cally, Plaintiffs allege that Defendants 
use of BABCOCK & BROWN marks is deceptive because it is likely to mislead 
consumers to believing an association between Plaintiffs and Defendants.  
Plaintiffs claim this use will cause a loss of business opportunities and damage to 
Plaintiffs’ reputation.  Plaintiffs allege that Defendants’ conduct is unfair because 
it offends the public policy established un der the federal, state, and common law 
trademark infringement law discussed above.  
Defendants’ argument for why the state and common law unfair competition 
claim should be dismissed is dependent on the Court dismissing the federal, state, 
and common law trademark infringement claims. Because the Court does not 
dismiss those claims, and because Defend ants have not raised another basis for 
dismissing this count, the Court denies De fendants’ motion to dismiss count five 
of the amended complaint.  
F. Counts 6 through 10: Cancellation of the BABCOCK & BROWN and B&B 
Marks and Refusal of the Pending BURNHAM BABCOCK & BROWN 
Application 
Count six through ten seek to cancel Defendants various trademarks and to 
refuse the pending application to trademark BURNHAM BABCOCK & BROWN.  
Defendants’ argument for why cancellation/refusal claims should be dismissed is 
dependent on the Court finding a lack of sufficient evidence to establish likelihood 
Case 3:20-cv-01056-OAW     Document 89     Filed 09/29/21     Page 17 of 18
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of confusion.  Because the Court found that Plaintiffs’ complaint sufficiently 
alleged likelihood of confusion, and because Defendant s have not raised another 
basis for dismissing this count, the Court denies Defendants’  motion to dismiss 
counts six through ten of the amended complaint.  
IV. CONCLUSION 
For the reasons stated above, Defendants motion to dismiss is DENIED.
IT IS SO ORDERED. 
__________________
Hon. Vanessa L. Bryant
United States District Judge
Dated this day in Hartford, Connecticut: September 29, 2021
Vanessa Bryant
Digitally signed by Vanessa 
Bryant 
Date: 2021.09.29 15:21:54 -04'00'
Case 3:20-cv-01056-OAW     Document 89     Filed 09/29/21     Page 18 of 18

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