Debevoise Lawyers Secure Dismissal of Trademark Infringement Lawsuit for Midcap Financial and Apollo Global Management

15 March 2022

Debevoise & Plimpton LLP has secured dismissal of a trademark infringement lawsuit for clients MidCap Financial and Apollo Global Management. The plaintiff, a commercial finance company called MidCap Business Credit, asserted that MidCap Financial had to change its name after more than 13 years in operation because – according to the plaintiff – there was a likelihood of confusion in the market. The plaintiff asserted that it had trademark rights in the standalone term “midcap” based on its registered trademark for MIDCAP BUSINESS CREDIT. The Court disagreed, however, and adopted the firm’s argument in full.

The Court held that “midcap” is a generic, or at best, a descriptive mark because it “is a word in the public domain and certainly part of the everyday parlance of those who run in the financial services industry.” Even as a descriptive mark, the court found the complaint fatally flawed because it did not plausibly “allege that “midcap” acquired secondary meaning prior to the defendants’ first use in 2008.” On likelihood of confusion, the Debevoise team successfully argued that the complaint failed to state a claim because the only allegation of similarity between the marks was the ubiquitous term “midcap.” The Court agreed the complaint was deficient in this respect as well: “I doubt whether a consumer, hearing or seeing the word ‘midcap’ standing alone, would immediately associate it with either the plaintiff or defendants. The plaintiff offers no facts suggesting otherwise, aside from its own self-serving ipse dixit (unproven statement), that its consumers have come to associate it with the term ‘midcap,’ a conclusory allegation that I am not bound to accept.”

The Debevoise team also convinced the court to side with the majority view in the Second Circuit, holding that the “garden variety” trademark infringement claims such as the ones brought by plaintiff do not constitute violations of the New York State deceptive practices law.

The Debevoise team was led by Jim Pastore and counsel Jared Kagan, and included associate Parker Eudy, with support from Senior Case Manager Elliot Beaver.