govinfo:USCOURTS-njd-2_22-cv-01268-0

Not for Publication 
 
UNITED STATES DISTRICT COURT 
DISTRICT OF NEW JERSEY 
 
 
THE DEMOCRATIC PARTY OF NJ, INC., 
organized as the NEW JERSEY 
DEMOCRATIC STATE COMMITTEE, 
 
Plaintiff, 
v. 
JAMES DEVINE, LISA MCCORMICK, 
“NJDEMS.COM”, NEW JERSEY 
DEMOCRATIC PARTY A NJ NONPROFIT 
CORPORATION, JOHN AND JANE DOES 1-
20, AND XYZ CORPORATIONS 1-20, 
 
Defendants. 
 
 
 
 
Civil Action No. 22-01268 
 
 
OPINION 
 
 
John Michael Vazquez, U.S.D.J. 
 
 This case concerns Defendants’ alleged unaut horized use of Plaintiff’s trademarks on a 
mailer that Defendants created and distributed to voters before the 2021 New Jersey general 
election. Currently pending before the Court is a motion to dismiss Pl aintiff’s Second Amended 
Complaint by Defendants James Devine, Lisa McCormick, NJDEMS.com, and New Jersey 
Democratic Party A NJ Nonprofit Corporation (collectively, “D efendants”). D.E. 20-1. 
Defendants also make a motion to strike. D.E. 20-1. The Court reviewed the submissions in 
support and in opposition,1 and considered the motion without oral argument pursuant to Fed. R. 
 
1 Plaintiff’s Second Amended Complaint will be re ferred to hereinafter as “SAC” (D.E. 16). 
Defendants’ brief in support of its motion to dismiss the complaint will be referred to hereinafter 
as “Def. Br.” (D.E. 20-1); Plaintiff’s brief in opposition to Defendants’ motion to dismiss the 
complaint will be referred to hereinafter as “Pl. Opp. Br.” (D.E. 22). Defendants’ reply brief will 
be referred to hereinafter as “Def. Reply.” (D.E. 23). PageID:
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Civ. P. 78(b) and L. Civ. R. 78.1(b). For the reasons stated below, Defendants’ motion to dismiss 
Count Six and motion to strike are DENIED, and Defendants’ motion to dismiss Counts One, 
Two, Three, Four, and Five is GRANTED. 
I. FACTUAL BACKGROUND2 
Plaintiff is the New Jersey Democratic Party Inc., organized as the New Jersey Democratic 
State Committee (“NJDSC”), the sole statewide committee authorized to represent the Democratic 
Party in New Jersey under state law. SA C ¶¶ 8, 22. Defendants De vine and McCormick 
(“McCormick”) are New Jersey residents, domestic partners, and co-owners and operators of the 
website NJDEMS.com. Id. ¶¶ 9–11. NJDEMS.com is a website that was registered on March 20, 
2009, and has New Jersey listed as the “home state” under “Registrant Contact Information.” Id. 
¶ 12 (citing Exhibit B). New Jersey Democratic Party A NJ Nonprofit Corporation (“NJDP Inc.) 
is a non-profit corporation with a registered offi ce in New Jersey, and Devi ne is the registered 
agent for, and one of the trustees and/or officers of, this nonprofit corporation. Id. ¶ 16. 
Through various avenues of communica tion, including the website that 
Plaintiff owns and operates—NJDEMS.org—Plain tiff has adopted a platform and endorsed 
candidates to communicate to voters that it has determined that the elec tion of those candidates 
would benefit Plaintiff’s goals. Id. ¶ 25. This included endorsing cer tain Democratic candidates 
for political office in the 2021 Ne w Jersey general election (“2021 Election”), as well as other 
upcoming election cycles. Id. 
Plaintiff alleges that in October 2021, in the days leading up to in -person voting for the 
2021 Election, and after the start of the mail-in voting period, De fendants sent an unsolicited 
 
2 The factual background is take n from Plaintiff’s S econd Amended Complaint, D.E. 16. When 
reviewing a motion to dismiss, the Court accepts as true all well-pleaded f acts in a complaint. 
Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). PageID:
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political mailer (the “Mailer”) to New Jersey re sidents that was intended to deceive voters into 
believing that the candidates depicted on the Ma iler were endorsed or supported by Plaintiff. Id. 
¶ 1. The Mailer was sent to Union County Residents, primarily in the Borough of Roselle. Id. ¶¶ 
31–32. One side of the Mailer depicted a picture of Gover nor Phil Murphy and Lieutenant 
Governor Sheila Oliver (who were running for re-election), as well as a photograph of three 
candidates running for the Board of Education in Roselle: Gi sselle Bond, Yessica Chavez, and 
France Cortez. Id. ¶ 33 (citing Exhibit A). Along the bottom, it read: “Paid for by 
NJDEMS.COM,” “New Jersey De mocratic Party,” and “Not au thorized by any candidate or 
committee.” Id. ¶ 35. On the other side, the Mailer in cluded photographs of the same five 
individuals, with the text, “Please be sure to vote Column 1 for school board & Column A all the 
way from Governor on Down!,” “Gisselle Bond, Ye ssica Chavez, & Frances Cortez are the best 
candidates for Roselle Schools!” Id. ¶¶ 36–37. 
Plaintiff claims that the Mailer, which feat ured the terms “NJDEM S” and “New Jersey 
Democratic Party,” strongly implied that Plaintiff endorsed or supported the Board of Education 
candidates, just as Plaintiff had endorsed Governor Murphy and Lt. Governor Oliver in the 
upcoming election. Id. ¶¶ 1, 34. But Plaintiff did not e ndorse the school board candidates. Id. ¶ 
34. Plaintiff continues that Devine and McCormick have an extensive history of similar conduct 
and provide numerous specific examples. Id. ¶¶ 58–81. 
II. PROCEDURAL HISTORY 
On October 22, 2021, Plaintiff filed a Complain t in the Superior Court of New Jersey, 
alleging one count of civil conspiracy. D.E. 1-1. The state court temporarily enjoined Defendants 
from “creating and publishing or tr ansmitting political flyers, communications or advertisements 
which include or imply endorsement or authorization by [Plaintiff].” D.E. 1-3, 1-9, 1-12. PageID:
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Plaintiff filed its Fi rst Amended Complaint (“FAC”) on March 8, 2022, adding five 
additional claims. D.E. 1-19. Defendants then removed the acti on to this Court and moved to 
dismiss the FAC. D.E. 1, 4. On April 11, 2022, the Court administratively terminated the motion 
to dismiss and ordered that Plaintiff file an amended complaint. D.E. 15. On May 2, 2022, Plaintiff 
filed its Second Amended Complaint (“SAC”). D. E. 16. In the SAC, Plaintiff asserted the 
following claims: (1) Count 1, civil conspiracy; (2) Count 2, a violation of the Anticybersquatting 
Consumer Protection Act (“ACPA”); (3) Counts 3 through 5, unfair competition claims pursuant 
to the Lanham Act, New Jersey statutory law, and common law, respectively; and (4) Count 6, a 
violation of New Jersey’s corporate name statute. The current motion followed. 
III. LAW AND ANALYSIS 
Defendants first argue that Plaintiff’s SAC should be di smissed as an impermissible 
attempt to constrain Defendants’ First Amendment right to freedom of sp eech. Defendants next 
argue that the Court should strike the SAC under Federal Rule of Civil Procedure 12(f) on the 
ground that it contains immaterial, impertinent, redundant, and scandalous statements. Defendants 
then contend that Plaintiff’s unfair competition, c ybersquatting, and conspiracy claims (Counts 
One through Five) fail to state a claim for relief. Defendants continue that Plaintiff’s violation of 
the state corporate name statute likewise fails. Lastly, Defendants contend that the SAC should be 
dismissed because of laches. The Court first examines the First Amendment argument before 
addressing the Rule 12(f) motion to strike and Rule 12(b)(6) motion to dismiss arguments. 
A. First Amendment 
Defendants contend that Plaintiff’s Lanha m Acts claims are barred by the First 
Amendment. Defendants argue that the speech at issue is political , rather than commercial, and PageID:
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that such speech is therefore (1) not regulated by the Lanham Act; and (2) instead falls “under the 
auspices of the First Amendment.” Def. Br. at 4–6. The Court disagrees. 
The Lanham Act protects the unauthorized use of a mark in connection with the advertising 
of any goods or services if such use is likely to cause confusion. 15 U.S.C. §1125(a). The term 
“services” has been interpreted broadly to apply to non-commerc ial public and civic benefits, 
including political organizations engaged in certain activities analogous to those alleged here. See 
United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86, 93 (2d Cir. 1997) 
(finding that the Lanham Act applied to th e defendants who performed “the services 
characteristically rendered by a political party,” incl uding issuing press re leases intended to 
support certain candidates); cf. American Diabetes Ass’n, Inc. v. National Diabetes Ass’n, 533 F. 
Supp. 16, 20–21 (E.D.Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982) (applying the Lanham Act to 
the defendant, who was offering similar charitable services under the name “National Diabetes 
Association” to those offered by the plaintiff). Accordingly, th e services allegedly offered by 
Defendants—sending mailers to New Jersey voters in support of certain candidates, purportedly 
on behalf of the “New Jersey Democratic Party”—fall within the purview of the Lanham Act. 
In addition, under the Lanham Act, neither political nor commercial speech will “fall under 
the auspices of the First Amendment” where use of the plaintiff’s mark is likely to cause significant 
consumer confusion. See United We Stand, 128 F.3d at 93 (“Even assuming that [the defendant] 
might communicate its political message more effectively by appropriating [the plaintiff’s] mark, 
such appropriation would cause significant consumer confusion [and] is not protected by the First 
Amendment.”].3 In United We Stand, the defendant argued that their use of the plaintiff’s political 
 
3 See also Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018 (3d Cir. 2008) (explaining that in 
the context of commercial speech, which “does receive some First Amendment protection,” the 
Lanham Act is “customarily [able to] avoid[] violating the First Amendment, in part by enforcing PageID:
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mark was protected by the First Am endment. 128 F.3d at 93. The court rejected this argument, 
reasoning that because the defend ant was using the mark to associ ate itself with the plaintiff’s 
political movement, rather than using it for an expressive purpose, the use was not protected. Id. 
The court emphasized that use of a mark to suggest the same source identification is “precisely the 
use,” that is reserved by the Lanham Act to the owner of a mark because permitting such use would 
cause confusion and allow for appropriation. Id. 
Here, because Plaintiff argues that Defendant s are using its marks, “NJDEMS.com” and 
“New Jersey Democratic Party,” to suggest the same source identification as Plaintiff, rather than 
for an expressive purpose, (Pl. Opp. Br. at 32–33), Defendants’ First Amendment argument fails. 
B. Rule 12(f) Motion to Strike 
Rule 12(f) of the Federal Rules of Civil Procedure states that a “court may strike from a 
pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” 
Fed. R. Civ. P. 12(f). Thus, Rule 12(f) sets forth two standards for striking matter from a pleading: 
(1) “an insufficient defense,” or (2) “any red undant, immaterial, imperti nent, or scandalous 
matter.” Fed. R. Civ. P. 12(f). The second category is at issue here. 
“[W]here the challenged material is redundant, immaterial, impertinent, or scandalous, a 
motion to strike should not be gr anted unless the presence of the surplusage will prejudice the 
adverse party.” F.T.C v. Hope Now Modifications, No. 09-1204, 2011 WL 883202, at *1 (D.N.J. 
Mar. 10, 2011). But motions to strike “will genera lly ‘be denied unless th e allegations have no 
possible relation to the controvers y and may cause prejudice to one of the parties, or if the 
 
a trademark only when consumers ar e likely to be misled or confused by the alleged infringer’s 
use); MGM-Pathe Communications Co. v. Pink Panther Patrol , 774 F.Supp. 869, 877 (S.D.N.Y. 
1991) (finding that there is “no legal support” for the defendant’s position that because it is 
engaged in political speech it is less subject to the trademark laws). PageID:
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allegations confuse the issues.’” Garlanger v. Verbeke, 223 F. Supp. 2d 596, 609 (D.N.J. 2002) 
(quoting Tonka Corp. v. Rose Art Indus., Inc., 836 F. Supp. 200, 217 (D.N.J. 1993)). “As a general 
matter, motions to strike under Rule 12(f) are highly disfavored.” Thompson v. Real Est. Mortg. 
Network, Inc., No. 11-1494, 2018 WL 4604310, at *2 (D.N.J. Sept. 24, 2018) (citing Hope Now 
Modifications, 2011 WL 883202, at *1). Further, the decision to strike material from a pleading 
is discretionary. Hope Now Modifications, LLC, 2011 WL 883202, at *1. 
Defendants move to strike paragraphs 2, 33, 34, 36–44, 48–50, 58–80, 83, 93, and 94. Def. 
Br. at 7–16. Defendants assert that the statemen ts made in these para graphs are immaterial, 
impertinent, and confuse the issues before the cour t, and that the “sole reason” for them is to 
prejudice Defendants’ case. Def. Br. at 16. Defendants have not, however, demonstrated “no 
possible relation” to the controversy nor any “unfair prejudice” and therefore cannot overcome the 
high burden required for a motion to strike. See Hope Now Modifications, LLC, 2011 WL 883202, 
at *1 (citation omitted) (“[W]her e the challenged material is redundant, immaterial, impertinent, 
or scandalous, a motion to strike should not be granted unless the presence of the surplusage will 
prejudice the adverse party.”). 
C. Rule 12(b)(6) Motion to Dismiss 
Rule 12(b)(6) permits a motion to dismiss fo r “failure to state a claim upon which relief 
can be granted[.]” Fed. R. Civ. P. 12(b)(6). Fo r a complaint to survive dismissal under the rule, 
it must contain sufficient factual matter to st ate a claim that is plausible on its face. Ashcroft v. 
Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). 
A claim is facially plausible “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. Further, a PageID:
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plaintiff must “allege sufficient facts to raise a reasonable expectation that discovery will uncover 
proof of her claims.” Connelly v. Lane Const. Corp., 809 F.3d 780, 789 (3d Cir. 2016). 
In evaluating the sufficiency of a complaint, district courts must separate the factual and 
legal elements. Fowler v. UPMC Shadyside, 578 F.3d 203, 210–211 (3d Cir. 2009). Restatements 
of the elements of a claim are legal conclusions, and therefore, not entitled to a presumption of 
truth. Burtch v. Milberg Factors, Inc. , 662 F.3d 212, 224 (3d Cir. 2011) . The Court, however, 
“must accept all of the complaint’ s well-pleaded facts as true.” Fowler, 578 F.3d at 210. In 
deciding a motion to dismiss the Court may also c onsider any “document integral to or explicitly 
relied upon in the complaint.” Schmidt v. Skolas, 770 F.3d 241, 249 (3d Cir. 2014) (citing In re 
Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1426 (3d Cir. 199 7) (quotation & emphasis 
omitted)); see also Fed. R. Civ. P. 10(c) (“A copy of a written instrument that is an exhibit to a 
pleading is a part of the pleading for all purposes.”). Even if plausibly pled, however, a complaint 
will not withstand a motion to dismiss if the facts alleged do not state “a legally cognizable cause 
of action.” Turner v. J.P. Morgan Chase & Co., No. 14-7148, 2015 WL 12826480, at *2 (D.N.J. 
Jan. 23, 2015).4 
1. Unfair Competition (Counts Three, Four, and Five) 
Plaintiff brings unfair competition claims against Defendants pursuant to the Lanham Act 
as well as New Jersey statutory and common law. The Lanham Act permits trademark holders to 
bring an action against persons or entities who, in connection with goods or services, use in 
commerce “any word, term, name, sy mbol, or device, or any combin ation thereof, or any false 
designation of origin,” which “is likely to cause confusion, or to cause mistake, or to deceive as to 
 
4 Defendants also ask the Court to dismiss pursuant to Rule 8. Def. Br. at 6. The Court treats this 
argument as part and parcel of the Rule 12(b)(6) motion. PageID:
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the affiliation, connection, or association . . . or as to the origin, sponsorship, or approval of his or 
her goods, services, or commercia l activities.” 15 U.S.C. §1125(a). To establish an unfair 
competition claim under the Lanham Act, a plaintiff must show the following: 
(1) the mark at issue is valid and legally protectable; (2) the mark is 
owned by the plaintiff; (3) the defendant used the mark in commerce 
or in connection with any goods or services or container for goods; 
and (4) this “use” was in a manner likely to create confusion 
concerning the origin of the goods or services. 
 
Freedom Funding Grp., Inc. v. Freedom Fundinggroup L.L.C. , No. CV2018404, 2022 WL 
3681281, at *10 (D.N.J. Aug. 25, 2022). 
If the mark at issue is federally registered and has become incontestable, then validity, legal 
protectability, and ownership are established. See Ford Motor Co. v. Summit Motor Prods. , 930 
F.2d 277, 292 (3d Cir. 1991). Where, as here, the mark has not been federally registered, “validity 
depends on proof of secondary mean ing, unless the registered mark is inherently distinctive.” 
Buying For The Home, 459 F. Supp. 2d 310, 318 (D.N.J. 2006) (quoting Fisons Horticulture, Inc. 
v. Vigoro Indus., Inc. , 30 F.3d 466, 472 (3d Cir. 1994)). In ev aluating the distinctiveness of a 
mark, the Court considers whether the mark is (1 ) generic; (2) descriptive; (3) suggestive; (4) 
arbitrary; or (5) fanciful. Id. (citing Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 768 
(1992)). Marks that are suggestive, arbitrary, or fanciful are considered inherently distinctive and 
entitled to protection, whereas marks that are descriptive are only protected if they attain secondary 
meaning. Freedom Funding Group., 2022 WL 3681281, at *10–11. 
Secondary meaning exists when the mark “is interpreted by the consuming public to be not 
only an identification of the products or services , but also a repres entation of the origin of those 
products or services.” Commerce Nat. Ins. Services, Inc., v. Commerce Ins. Agency, Inc., 214 F.3d 
432, 438 (3d Cir. 2000) (citation omitted). Ther efore, in determining whether a political PageID:
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organization’s name and insignia has secondary meaning, the inquiry is whether the relevant 
consuming class—meaning the persons in the releva nt geographic area who are interested in that 
party and its activities—associates the name a nd insignia of that party with the political 
organization. Partido Revolucionario Dominicano (PRD) Seccional Metropolitana de 
Washington-DC, Maryland y Virginia v. Part ido Revolucionario Dominicano, Seccional de 
Maryland y Virginia, 312 F. Supp. 2d 1, 13 (D.D.C. 2004). In making this determination, courts 
may consider the following non-exhaustive list of factors: 
(1) extent of sales and advertising leading to buyer association; (2) 
length of use; (3) exclusivity of use; (4) fact of copying; (5) 
customer surveys; (6) customer testimony; (7) use of mark in trade 
journals; (8) size of co mpany; (9) number of sales; (10) number of 
customers; and, (11) actual confusion. 
 
Ford Motor Co., 930 F.2d at 292. 
Courts may also consider “other efforts at creating a conscious connection in the public’s 
mind between the designation and the service.” American Diabetes Ass’n, 533 F.Supp. at 19. 
Because secondary meaning is a question of fact, a court does not need to determine at the motion 
to dismiss stage whether marks in fact have secondary meaning. E.T. Browne Drug Co. v. 
Cococare Prod., Inc., 538 F.3d 185, 192 (3d Cir. 2008). Instead, the Court must inquire whether 
Plaintiff has plausibly alleged that Plaintiff’s marks—“New Jersey Democratic Party” and 
“NJDEMS”—acquired secondary meaning prior to Defendants’ use , and whether Plaintiff’s use 
of these marks has been continuous.
5 See Ford Motor Co. , 930 F.2d at 292 (citation omitted) 
(“With respect to ownership of unregistered marks, the first party to adopt a trademark can assert 
 
5 Plaintiff also alleges, in conclusory fashion, that its marks are “inherently distinctive.” See, e.g., 
SAC ¶ 97. Plaintiff provides no f acts in support of this conclusion, and, in the Court’s view, the 
marks are clearly descriptive. PageID:
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ownership rights, provided it contin uously uses it in commerce.”). The Court addresses each of 
the marks in turn. 
As to “New Jersey Democratic Party,” the Court cannot reasonably infer that the mark has 
acquired secondary meaning because the SAC fails to allege any facts about Plaintiff’s use of the 
mark. Turning to “NJDEMS,” Plaintiff has pled that “[t]he term NJDEMS is used consistently by 
Plaintiff through various forms of media, including on Twitter, Facebook, its website, and other 
various media and advertising ca mpaigns,” and that “Plaintiff uses the term NJDEMS in 
association with various campaign materials it distributes in re lation to electi ons throughout the 
State of New Jersey,” such that the “public asso ciates NJDEMS with Plai ntiff” and the services 
and goods that Plaintiff provides. SAC ¶¶ 91, 97. Plaintiff has also indicated that it uses the 
NJDEMS mark in its domain name in support of its statutorily granted authority to represent the 
Democratic party in New Jersey and that through this domain, and other forms of communication, 
it endorses certain Democratic candidates to inform voters that it has determined that the election 
of those candidates would be beneficial to Plaintiff’s objectives. Id. ¶¶ 25, 92. Likewise, Plaintiff 
contends that Defendants used the NJDEMS mark on the Mailer, and as part of their website, to 
deceive the Union County New Je rsey voters into believing that Plaintiff endorsed the Board of 
Election candidates featured on the Mailer. Id. ¶¶ 1, 31, 78, 98–101. 
The SAC does not, however, plead sufficient fact s pertaining to the scope, duration, and 
continuity of Plaintiff’s use of “NJDEMS” such that the Court can plausibly infer secondary 
meaning. For example, while the pleadings set forth the various mediums by which the mark is 
used (“Twitter, Facebook, its website, and othe r various media and advertising campaigns”), and 
conclude that “the public associ ates NJDEMS with Plaintiff,” Pl aintiff does not describe facts 
pertaining to the duration of use on each of these mediums or the public’s recognition of the mark PageID:
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through these mediums (e.g., the nu mber of Twitter or Facebook followers Plaintiff has or the 
number of visitors to its website). Id. ¶¶ 91, 97. Likewise, Plaintiff pleads that that the mark is 
used “in association with various campaign mate rials it distributes,” bu t does not allege facts 
pertaining to the duration and scope of such distributions. Id. ¶ 91. 
While it is not necessarily requi red to plead each one of these fa cts at this stage, Plaintiff 
must allege more—with respect to the scope, dur ation, and continuity of the use—to support a 
reasonable inference of secondary meaning in the minds of th e consuming public. See, e.g. , 
Lorillard Tech., Inc. v. NJ Ale House, LLC ¸ No. 2:14-2044, 2015 WL 1197531, at *7–8 (D.N.J. 
Mar. 13, 2005) (finding that se condary meaning was sufficiently pled where the plaintiff alleged 
the year that the use of the mark began and the numerous mediums through which the mark had 
been advertised to the relevant buyer class, including but not limited to magazines, news channels, 
commercials that featured celebrity spokespersons, and “major entertainment and sporting events,” 
including the Oscars and Grammy awards); see also Valley Forge Mil. Acad. Found. v. Valley 
Forge Old Guard, Inc. , 24 F. Supp. 3d 451, 457 (E.D. Pa. 2014) (finding that the plaintiffs 
plausibly pled that its marks we re inherently distinctive or had secondary meaning where the 
complaint stated that for about 80 years, and prior to the defendants’ us e, the plaintiffs 
continuously used their marks in commerce in connection with their services; that significant time, 
effort, and expense had been invested by the plaintiffs in advertising and promoting these marks; 
and that the marks had “been used extensively by the press or other media to identify plaintiffs and 
the services they provide.”); American Diabetes Ass’n,, 533 F.Supp. at 19 (finding a reasonable 
likelihood that the pl aintiffs would be able to show that their mark achieved secondary meaning 
where the mark had been in use for 40 years, and the plaintiffs “s howed a long history of PageID:
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advertising in magazines and on television as well as extensive promotional efforts aimed at 
creating a nexus in the public’s mind between [the mark] and the services they provide.”). 
Finally, Plaintiff must also allege sufficient facts to plausibly show that the marks had 
acquired secondary meaning by March 20, 2009 and March 30, 2009, the da tes that Defendants 
allegedly began using the “NJDEMS” and “New Jersey Democratic Party” marks, respectively. 
SAC ¶¶ 12, 16 n. 2; see Commerce Nat. Ins. Services, Inc. , 214 F.3d at 438 (“A plaintiff must 
establish secondary meaning in a mark at the time and place that the defe ndant began use of the 
mark.”); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231–32 (3d Cir. 1978) (the 
proper test is whether [the plaint iff] had established secondary m eaning in the [] market before 
[the defendant] began using tis mark.”). Because the SAC does not set forth any facts pertaining 
to when secondary meaning of either mark was ac quired, Plaintiff fails to sufficiently allege that 
“New Jersey Democratic Party” or “NJDEM S” established second ary meaning prior to 
Defendants’ use. 
Turning to likelihood of confusion, marks are “confusingly similar if ordinary consumers 
would likely conclude that the two products sh are a common source, af filiation, connection, or 
sponsorship.” A & H Sportswear, Inc., v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 216 (3d Cir. 
2000) (quoting Fisons Horticulture Inc., v. Vigoro Industries, Inc. , 30 F.3d 466, 477 (3d Cir. 
1994)). While courts may consider many factors 6 when assessing the likelihood of confusion, if 
 
6 The relevant factors consist of the following: 
 
(1) the degree of similarity be tween the owner's mark and the 
alleged infringing mark; (2) the strength of the owner's mark; (3) the 
price of the goods and other factors indicative of the care and 
attention expected of consumers when making a purchase; (4) the 
length of time the defendant has used the mark without evidence of 
actual confusion arising; (5) the intent of the defendant in adopting 
the mark; (6) the evidence of actual confusion; (7) whether the PageID:
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“the trademark owner and the alleged infringer deal in competing goods and services, the court 
need rarely look beyond the mark itself.” Interpace Corp. v. Lapp, Inc. , 721 F.2d 460, 462 (3d 
Cir. 1983). Indeed, “[w]here goods or services are in direct competition . . . the degree of similarity 
required to prove likelihood of conf usion is less than is requir ed for dissimilar products.” E.A. 
Sween Co., Inc. v. Deli Exp. of Tenafly, LLC , 19 F. Supp. 3d 560, 569 (D.N.J. 2014) (citing Kos 
Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 713 (3d Cir. 2004)). 
Plaintiff has sufficiently pled that Defendants’ use of NJDEMS could cause a likelihood of 
confusion. Plaintiff alleges that, in the days leading up to the 2021 Election, Defendants used the 
“NJDEMS” mark as part of their website and on their Mailer, to imply that Plaintiff endorsed the 
Board of Election candidates, just as Plaintif f had endorsed Governor Murphy and Lt. Governor 
Oliver, who were pictured on the Mailer alongside the local candidates, w ith the phrases “New 
Jersey Democratic Party” and “Paid for by NJDEMS.com.” SAC ¶¶ 1, 31–32, 78, 98–99. Plaintiff 
also sufficiently alleges that because “NJDEMS. com” is identical to “NJDEMS.org,” apart from 
the domain name extension, such use of the mark was likely to create confusion regarding the 
origin of the goods and services referenced therein. SAC ¶¶ 100–101. See Cosm. Warriors Ltd. 
V. Nailush LLC, Civ. No. 17-1475, 2017 WL 5157390, at *4 (D.N.J. Nov. 6, 2017) (“Even if there 
 
goods, competing or not competing, are marketed through the same 
channels of trade and advertised through the same media; (8) the 
extent to which the targets of the parties’ sales efforts are the same; 
(9) the relationship of the goods in the minds of consumers, whether 
because of the near-identity of the products, the similarity of 
function, or other factors; (10) other facts suggesting that the 
consuming public might expect the prior owner to manufacture both 
products, or expect the prior owner to manufacture a product in the 
defendant's market, or expect that the prior owner is likely to expand 
into the defendant's market. 
 
A & H Sportswear, 237 F.3d at 212 (citation omitted). PageID:
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is some difference between the marks, if the infringing mark appropriates the entire mark but adds 
a descriptive word, a likelihood of confusion may exist.”); see also E.A. Sween Co. , 19 F. Supp. 
3d at 569 (recognizing that “Deli Express” and “Deli Express of Tenafly” “are identical (with ‘OF 
TENAFLY’ appended)” and in turn, are likely to cause confusion); Lapp, 721 F.2d at 462 (finding 
that the marks “Lapp” and “Lapp Cable” are identic al “for all practical purposes” and thus likely 
to cause confusion). For similar reasons, the Cour t finds that Plaintiff ha s adequately pled that 
Defendants’ use of the “New Jersey Democratic Party” mark could cause a likelihood of confusion. 
In sum, the Court finds that the SAC fails to adequately pl ead: (1) that “NJDEMS” and 
“New Jersey Democratic Party” acquired secondary m eaning, generally and at the time that 
Defendants began use. “Because the elements of a claim of unfair competition under the Lanham 
Act are the same as for claims of unfair competition and trademark infringement under New Jersey 
statutory and common law, the Cour t's analysis [above] ex tends to Plaintiff's state law claims as 
well.” Buying For The Home , 459 F. Supp. 2d at 317; see also J & J Snack Foods, Corp. v. 
Earthgrains Co. , 220 F. Supp. 2d 358, 374 (D.N.J. 2002) (“ [T]he elements for a claim for 
trademark infringement under the Lanham Act are the same as the el ements for a claim of unfair 
competition under the Lanham Act and for cla ims of trademark infringement and unfair 
competition under New Jersey statutory and common law”); Harlem Wizards Entertainment 
Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084, 1091 (D.N.J. 1997) (“N.J.S.A. 56:4-
1 is the statutory equivalent of Section 43(a)(1) of the Lanham Act”). 
Accordingly, the Court grants Defendants’ Motion to Dismiss Count Three (unfair 
competition pursuant the Lanham Ac t), Count Four (unfair competition pursuant to N.J.S.A. § 
56:4-1), and Count Five (common law unfair competition). PageID:
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2. Cybersquatting (Count Two) 
Plaintiff also claims that Defendants violated the Anticybersquatting Consumer Protection 
Act (“ACPA”) SAC ¶¶ 90–95. “[C]ybersquatting is th e act of registering, in bad faith and to 
garner profit, on the internet a domain name so similar to a distinctive mark that it is confusing.” 
Green v. Fornario , 486 F.3d 100, 103 n. 5 (3d Cir. 2007). To prevail on an ACPA claim, the 
plaintiff must prove that (1) plaintiff’s mark was a distinctive or famous mark entitled to protection 
at the time of registration; (2) defendants’ domai n name is “identical or confusingly similar to” 
plaintiff’s mark; and (3) defendants registered the domain name with the bad faith intent to profit 
from the mark. Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001). 
Here, the Court must first determine whether Plaintiff has alleged sufficient facts to 
establish that its mark (“NJDEMS”) was a distin ctive or famous mark at the time Defendants 
registered their domain name, “NJDEMS.com.” 15 U.S.C. §1125(d)(1)(A)(ii)(I) and (II). The 
following factors may be considered when making this inquiry: 
(A) the degree of inherent or acqui red distinctiveness of the mark; 
(B) the duration and extent of use of the mark in connection with the 
goods or services with which the mark is used; (C) the duration and 
extent of advertising and publicity of the mark; (D) the geographical 
extent of the trading area in which the mark is used; (E) the channels 
of trade for the goods or services with which the mark is used; (F) 
the degree of recognition of the mark in the trading areas and 
channels of trade used by the ma rks' owner and the person against 
whom the injunction is sought; (G) th e nature and extent of use of 
the same or similar marks by third parties. 
 
Shields, 254 F.3d at 482 (citing 15 U.S.C. §1125(c)(1)). 
As determined above in connection with th e unfair competition clai ms, Plaintiff has not 
sufficiently pled facts to support a finding that its “NJDEMS” ma rk, which is incorporated in the 
domain name “NJDEMS.org,” has acquired secondary meaning. As a result, the SAC does not PageID:
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plead adequate facts to support a finding that “NJDEMS.org” had acquired secondary meaning by 
March 20, 2009, the date on which Defendants allegedly registered “NJDEMS.com.” SAC ¶ 12. 
Otherwise, Plaintiff has adequately alleged that Defendants’ domain name and mark is 
identical or confusingly similar to Plaintiff’ s mark. Defendants’ re gistered domain name, 
NJDEMS.com, is identical to Plaintiff’s domain name, NJDEMS.org, and accordingly is 
confusingly similar. See Fancaster, Inc. v. Comcast Corp. , 832 F.Supp.2d 380, 428 (“Courts 
generally ignore exte nsions like ‘.com’ or ‘.org’ when evaluating whether domain names are 
identical for the purposes of ACPA.”); see also Shields , 254 F.3d at 438 (upholding the district 
court’s finding that the domain names at issue were confusingly similar because only a few letters 
varied between them and reasoning that Defendants had anticipated that consumers would make a 
mistake, thereby increasing traffic to their own website, which is the “classic example” of a 
practice the ACPA aims to prevent). 
Similarly, Plaintiff has adequately alleged that Defendants registered the domain name 
with the bad faith intent to profit from the mark. The ACPA provides a non-exhaustive list of nine 
factors to consider whether a de fendant has acted in bad faith. See 15 U.S.C. §1125(d)(1)(B)(i). 
One key consideration is the 
person’s intent to divert consumers from the owner’s online location 
to a site accessible under the dom ain name that could harm the 
goodwill represented by the mark, either for commercial gain or 
with the intent to tarnish or disparage the mark, by creating a 
likelihood of confusion as to the source, sponsorship, affiliation, or 
endorsement of the site. 
 
15 U.S.C. §1125(d)(1)(B)(i)(V). Here, Plaintiff alleges that Defendants “attempt[ed] to deceive 
voters into believing that the candidates depict ed on the mailings were actually endorsed or 
supported by Plaintiff or were selected as party nominees in Plaintiff’s primary election,” and that 
Defendants “intended to divert th e public from NJDEMS.org in an effort to mislead voters into PageID:
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believing that NJDEMS.com was the official website of Plaintiff.” SAC ¶¶ 1, 94. The Court finds 
these allegations sufficient to support a finding of bad faith. 
In sum, the pleadings are adequate to support a finding that Defendants’ domain name and 
mark is identical or confusingly similar to Plai ntiff’s mark, and that De fendants registered the 
domain name in bad faith; however, the pleadings are insufficient to find that “NJDEMS” acquired 
secondary meaning, both genera lly and at the time that Defenda nts began use. Accordingly, 
Defendants’ motion to dismiss with respect to Count Two (cybersquatting) is granted. 
3. Violation of Corporate Name Statute (Count Six) 
Plaintiff also asserts a corporate name claim pursuant to New Jersey law. Under N.J. Stat. 
Ann. § 15A:2-2, a nonprofit’s corporate name “[s]hall not be the same as, or confusingly similar 
to, the corporate name of any domestic corporation” unless that corporation or corporate entity has 
provided appropriate written consent or a court has rendered a final judgment establishing the prior 
right of the corporation to use the name in this state. N.J. Stat. Ann. §15A:2-2(a)(2). A nonprofit’s 
corporate name is “confusingly similar” where the name being used by defendant has widespread 
recognition such that “[i]t may we ll be assumed by the public that any unit bearing that name is 
part of the larger organization and shares its prestige.” See New Jersey Ass'n for Child. with 
Learning Disabilities v. Burlington Cnty. A ss'n for Child. with Learning Disabilities , 163 N.J. 
Super. 199, 208, (Ch. Div. 1978), aff'd in part, rev'd in part on other grounds, 174 N.J. Super. 149, 
(App. Div. 1980) (enjoining defendants from using the title “Burlington County Association for 
Children with Learning Disabilities,” because the name “Association for Children With Learning 
Disabilities,” had “nationwide recognition” a nd thus created confusion about defendant’s 
affiliation with the plaintiff). PageID:
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 Here, Plaintiff pleads that the name of Defendants’ nonpro fit corporation, “New Jersey 
Democratic Party A NJ Nonprofit Corporation” is confusingly si milar to Plaintiff’s corporate 
name, “The Democratic Party of NJ, Inc., or ganized as the New Jersey Democratic State 
Committee.” SAC ¶¶ 105, 107–108. Plaintiff also pl eads that it is the sole statewide committee 
authorized to represent Democrats and the Democr atic party in New Jersey and is tasked with 
maintaining the political organization and management of the Democratic Party within the State. 
SAC ¶ 106. Plaintiff continues th at by incorporating a nonprofit using the name “New Jersey 
Democratic Party,” Defendants evidenced their inte nt to conceal their id entity and deceive the 
voters in the state and “created actual confusi on among voters” as to wh ether Plaintiff endorsed 
the Board of Education candidates depicted on the Mailer. SAC ¶¶ 57, 80. The Court finds these 
allegations sufficient to support a finding that the names are “conf usingly similar.” Therefore, 
Defendants’ motion to dismiss Count Six is denied. 
4. Civil Conspiracy (Count One) 
Count One alleges civil conspiracy w ith the underlying unlaw ful acts of (i) 
misrepresenting, concealing, and faili ng to report political expenditures in viol ation of N.J. Stat 
Ann. 19:44A-21(a); (ii) not properly registering with ELEC pursuant to N.J. Admin. Code 19:25-
4.4 or 4.5; (iii) engaging in acts with the intent to defraud and deceive New Jersey voters regarding 
their affiliation with Plain tiff; (iv) registering a domain name with the bad faith intent to profit 
from the use of Plaintiff’s mark; (v) using Plaintiff’s marks in a manner likely to create confusion 
concerning the origin of the good s and services referenced; and (vi) incorporating and using a 
corporate name that is confusingly similar to Plaintiff’s. SAC ¶¶ 82–89. 
Under New Jersey law, civil conspiracy has f our elements: “‘(1) a combination of two or 
more persons; (2) a real agreement or confeder ation with a common design; (3) the existence of PageID:
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an unlawful purpose, or of a lawf ul purpose to be achieved by unl awful means; and (4) proof of 
special damages.’” MaxLite, Inc. v. ATG Elecs., Inc. , 193 F. Supp. 3d 371, 390 (D.N.J. 2016) 
(quoting Morganroth & Morganroth v. Norris, McLaughlin & Marcus , 331 F.3d 406, 414 (3d 
Cir.2003)); Banco Popular N. Am. v. Gandi , 184 N.J. 161, 177 (N.J. 2005). “In addition, one of 
the parties must commit some act that is itself a tort in pursuance of the agreement. Mere 
agreement to do an act can ne ver alone amount to a tort.” Delzotti v. Morris, No. 14-7223, 2015 
WL 5306215, at *7 (D.N.J. Sept. 10, 2015) (internal citations and quotations omitted). 
Defendants argue that Plaintiff “has failed to allege a civil conspiracy on every front.” As 
to the first and second elements, the Complaint alleges that “Defendants acted in concert, and upon 
information and belief, under an agreement, to commit several unlawful ac ts.” SAC ¶ 83. This 
conclusory allegation, standing alone, is insufficient. However, Plaintiff also alleges that “Devine 
and McCormick are domestic partners” who live at the same address. Id. ¶¶ 9–11. Taking these 
allegations as true, the reasonable inference is that Devine and McCormick are close and, therefore, 
more likely to act in concert. Moreover, Plaint iff indicates that Devine and McCormick have an 
extensive history of similar conduct, pr oviding numerous specific examples. Id. ¶¶ 58–81. The 
Court finds Plaintiff has adequately pled the first two elements of a civil conspiracy. 
The Court next addresses whether Plaintiff has adequately pled the existence of an 
underlying tort. First, with resp ect to the claims that Defendant s violated New Jersey Election 
Statute §19:44A-21(a) and New Jersey Administr ative Code §19:25-4.4 or 4.5, Plaintiff fails to 
demonstrate that the statut e and regulations provide fo r a private cause of action. 7 Plaintiff also 
 
7 As to the alleged violations of New Jersey Administrative Code §19:25-4.4 or 4.5, Plaintiff also 
fails to plead that Defendants have met the financial thresholds that trigger these regulations. See 
N.J. Admin. Code §19:25-4.4 and §19:25-4.5. Section 19:25-4.4 states, in re levant part, that a 
political committee shall be established no later than the date on which the committee “first 
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apparently pleads fraud in connection with the Mail er. The Court finds that the pleadings satisfy 
Rule 9(b),8 because they set forth “the nature or subject of the fraud, or an indication of who made 
the alleged representations and to whom,” as required by Rule 9(b). State Capital Title & Abstract 
Co. v. Pappas Business Services, LLC, 646 F.Supp.2d 667, 681 (D.N.J. 2009) (citations omitted). 
Plaintiff’s next two claims—(iv) registering a domain name with the bad faith intent to profit from 
the use of Plaintiff’s mark and (v) using Plain tiff’s marks in a manner likely to create confusion 
concerning the origin of the goods and services referenced—are restatements of Plaintiff’s Lanham 
Act and unfair competition claims, which as discussed above, have not been sufficiently pled. 
Plaintiff’s remaining allegation is a restatement of its Corporate Regist ration claim, which the 
Court has concluded was sufficiently pled. See supra C.3. 
The fourth element of civil conspiracy is special damages. “Special, as contradistinguished 
from general damage, is that which is the natura l, but not the necessary, consequence of the act 
complained of.” Delzotti, 2015 WL 5306215, at *8 (citation omitted); see Neal v. Honeywell, Inc., 
191 F.3d 827, 832 (7th Cir. 1999) (“ The usual consequences of a wrong are ‘general’ damages, 
and unusual consequences are ‘sp ecial.’”). Unlike ge neral damages, special damages must be 
 
contributes received in an election, or expenditures made or incurred in an election, totals $3,200 
or more,” and that “[a] political party which expects to raise or expend funds in each of two or 
more successive elections may apply to the Commis sion to be certified as a continuing political 
committee.” N.J. Admin. Code § 19:25-4.4(a), (f). S ection 19:25-4.5 states, in relevant part, that 
an organization shall become eligible to be cer tified by the Commission as a continuing political 
committee no later than the date on which it receives any contri bution or makes or incurs any 
expenditure that when combined with other contributions recei ved or expenditures made in a 
calendar year totals $7,200 or more. 
 
8 To satisfy Rule 9(b), a plaintif f must plead with particularity the circumstances of the alleged 
fraud to put defendants on notice of the precise misconduct they are charged with, which may be 
satisfied by pleading “date, place, or time of the fraud,” or through “alternative means of injecting 
precision and some measure of substantiation into thei r allegations of fraud.” State Capital Title 
& Abstract Co. v. Pappas Business Services, LLC, 646 F.Supp.2d 667, 681 (D.N.J. 2009) (quoting 
Seville Indus. Mach. Corp. v. Southmost Mach. Corp., 742 F.2d 786, 791 (3d Cir. 1984)). PageID:
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specifically pled under Rule 9(g). Fed. R. Civ. P. 9(g) (“If an item of special damage is claimed, 
it must be specifically stated.”). “The purpose unde rlying Rule 9(g) is to give notice to the other 
side of those ‘special’ damages claimed.” Delzotti, 2015 WL 5306215, at *8. (internal quotation 
and citation omitted). 
Here, Plaintiff has pled that “Defendants’ overt acts and illegal conduct has harmed 
Plaintiff, and the voters of New Jersey, by creating confusion surrounding Plaintiff’s endorsements 
and defrauding voters into believing that certain candidates on the Deceptive Mailer are endorsed 
by Plaintiff.” SAC ¶ 89. The Court is cognizant of the harm that can result when a political party’s 
name is misappropriated. See, e.g., United We Stand, 128 F.3d at 90 (“If diff erent organizations 
were permitted to employ the same trade name in endorsing candidates, voters would be unable to 
derive any significance from an endorsement, as they w ould not know whethe r the endorsement 
came from the organization whose objectives they shared or from another organization using the 
same name. . . . [t]he resulti ng confusion would be catastrophi c; voters would have no way of 
understanding the significance of an endorsement or position taken by parties of recognized major 
names.”). Nevertheless, Plaintiff has not satisf ied its burden of pleading that voter confusion 
qualifies as special damages. Accordingly, beca use Defendants have failed to adequately plead 
special damages, Defendants’ motion to dismiss Count One is granted with respect to all claims. 
5. Laches 
Defendants’ final argument is that laches precludes Plaintiff from maintaining this cause 
of action. Def. Br. at 39–41. Laches is an affirm ative defense, and “[g]en erally, courts in this 
circuit ‘will not rely on an affirmative defense . . . to trigger dismissal of a complaint under Rule 
12(b)(6).’” Emerson Radio Corp. v. Emerson Quiet Kool Co. Ltd. , No. 2:17-cv-5358, 2018 WL 
1169132, at *5 (D.N.J. Mar. 6, 2018) (c itations omitted). An affirmative defense will only be an PageID:
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appropriate ground for dismissal when, “on the face of a complaint, it is clear that the plaintiff can 
prove no set of facts to a void the insuperable bar.” Kaufhold v. Caifa , 872 F.Supp.2d 374, 380 
(D.N.J. 2012). Under the Lanham Act, claims ar e properly analogized to New Jersey’s six-year 
fraud statute; however, “[a] plaintiff is not obligated to sue until it knows or should know that the 
defendant’s conduct constitutes trademark infringement.” Kars 4 Kids Inc., v. American Can! , 8 
F.4th 209, 221 (3d Cir. 2021). Here, the pleadings are sufficient to support a finding that Plaintiff 
learned of Defendants’ use of its marks in October 2021, when the Mailer was distributed, which 
was days before Plaintiff initiated this action. SAC ¶ 31. Accordingly, because the laches issue 
cannot be decided based on the f ace of Plaintiff’s SAC, Defendants’ motion to dismiss on this 
ground is denied. 
IV. CONCLUSION 
Defendants’ motion to dismiss Counts One, Two, Three, Four, and Five is GRANTED. 
Counts One, Two, Three, Four, and Five are dis missed without prejudice to allow Plaintiff an 
opportunity to an amended pleading which cures the deficiencies noted herein. Plaintiff has thirty 
(30) days to file another amended complaint, an d if it does not do so, the dismissal will be with 
prejudice. Defendants’ motions are otherwise DENIED. An appropriate Order accompanies this 
opinion.  
 Dated: October 4, 2022 
____________________________ 
John Michael Vazquez, U.S.D.J. PageID:
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