23-947 

Now-Casting Economics, Ltd. v. Economic Alchemy LLC, et al.

UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO 

A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS 

GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S 

LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH 

THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN 

ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY 

CITING A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT 

REPRESENTED BY COUNSEL. 

At a stated term of the United States Court of Appeals for the Second Circuit, held at the 

Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 

28th day of May, two thousand twenty-four. 

PRESENT: 

REENA RAGGI,

DENNY CHIN,

MYRNA PÉREZ,

Circuit Judges. 

_____________________________________ 

NOW-CASTING ECONOMICS, LTD., 

Plaintiff-Counterclaim-Defendant-Appellee, 

v. No. 23-947 

ECONOMIC ALCHEMY LLC, 

Defendant-Counterclaimant-ThirdParty-Plaintiff-Appellant, 

v. 

FEDERAL RESERVE BANK OF NEW YORK, 

Third-Party-Defendant-Appellee.

*

_____________________________________ 

* The Clerk of Court is respectfully directed to amend the official caption as set forth above.
2 

FOR PLAINTIFF-COUNTERCLAIM-DEFENDANTAPPELLEE: Brian A. Katz, Katherine E. 

Mateo, Olshan Frome 

Wolosky LLP, New York, 

NY.

FOR DEFENDANT-COUNTERCLAIMANTTHIRD-PARTY-PLAINTIFF-APPELLANT: Ronald D. Coleman, Dhillon 

Law Group Inc., Newark, NJ. 

THIRD-PARTY-DEFENDANT-APPELLEE: Bruce W. Baber, Jeremy M. 

Bylund, Zoe M. Beiner, King 

& Spalding LLP, Atlanta, GA, 

Washington, D.C.

Appeal from a judgment of the United States District Court for the Southern District of 

New York (Cronan, J.; Ramos, J.).

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND 

DECREED that the September 15, 2022 judgment of the district court is AFFIRMED. 

This case concerns a trademark dispute. Plaintiff-Counterclaim-Defendant-Appellee 

Now-Casting Economics, Ltd. (“NCE”) and Defendant-Counterclaimant-Third-Party-PlaintiffAppellant Economic Alchemy LLC (“EA”) are entities that provide services related to economic 

“nowcasting,” which attempts to predict present economic conditions. EA timely appealed the 

district court’s grant of summary judgment in favor of NCE, and the district court’s dismissal of 

EA’s third-party complaint against Third-Party-Defendant-Appellee Federal Reserve Bank of 

New York (the “NY Fed”). For the reasons explained below, we affirm. 

BACKGROUND

We assume the parties’ familiarity with the underlying facts, the procedural history, and 

the issues on appeal, and only recite them as necessary to explain our decision to affirm. NCE 
3

began marketing its nowcasting services in the United States, using its present name, as early as 

February 2011. In May 2013, EA obtained the United States registrations for the marks 

“NOWCAST” and “NOW-CAST” (the “Marks”). In its registrations and applications for the 

Marks, EA stated that the date of first use of the Marks in commerce was January 2012. 

In 2016, EA sent NCE a cease-and-desist letter alleging that NCE was infringing the 

Marks. In March 2018, NCE filed suit against EA in federal court seeking, as relevant here, a 

declaratory judgment stating it was not infringing the Marks. EA filed a counterclaim against 

NCE for, among other things, trademark infringement, and it also filed a third-party complaint 

against twelve Federal Reserve Banks, including the NY Fed.

2

 The district court dismissed EA’s 

third-party complaint with prejudice in September 2019. In January 2020, the United States 

Patent and Trademark Office (“PTO”) cancelled EA’s trademark registrations for the Marks on 

administrative grounds. In September 2022, the district court granted summary judgment in 

favor of NCE. On appeal, EA challenges the district court’s grant of summary judgment in favor 

of NCE, and the district court’s dismissal of its third-party complaint against the NY Fed. 

DISCUSSION

I. General Trademark Law Principles

Section 43(a) of the Lanham Act “protects qualifying unregistered trademarks” from 

infringement. ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 154 (2d Cir. 2007) (quoting Two Pesos 

v. Taco Cabana, 505 U.S. 763, 768 (1992)). A party asserting trademark infringement for an 

unregistered mark or dress under the Lanham Act “must prove (1) that the mark or dress is 

2 On appeal, the parties agreed to a stipulated dismissal of the other eleven Federal Reserve Banks and, therefore, the 

NY Fed is the only remaining Federal Reserve Bank in the instant appeal. 
4

distinctive as to the source of the . . . service at issue, and (2) that there is the likelihood of 

confusion between the plaintiff’s . . . service and that of the defendant.” Id.; see also 15 U.S.C. 

§ 1125(a)(1). “Preliminary to making this showing, however, a [party seeking trademark 

protection] must demonstrate its own right to use the mark or dress in question.” ITC Ltd., 482 

F.3d at 154. “Whether a mark is entitled to protection depends, in part, upon a showing of prior 

use.” Excelled Sheepskin & Leather Coat Corp. v. Or. Brewing Co., 897 F.3d 413, 417 (2d Cir. 

2018). 

II. EA Fails to Establish that the District Court Erred in Granting Summary Judgment 

in Favor of NCE 

We review de novo a district court’s grant of summary judgment. See Garcia v. Hartford 

Police Dep’t, 706 F.3d 120, 126 (2d Cir. 2013) (per curiam). “We may affirm summary judgment 

on any ground supported by the record, even if it is not one on which the district court relied.” 

McElwee v. County of Orange, 700 F.3d 635, 640 (2d Cir. 2012). 

First, the district court did not err by placing the burden on EA to prove that NCE infringed 

the Marks. The law is clear that in an action seeking a declaration that a party is not infringing a 

mark, as in this case, the party seeking protection of the mark has the burden to prove infringement. 

See Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191, 199 (2014) (“[I]n a 

licensee’s declaratory judgment action, the burden of proving infringement should remain with the 

patentee.”); see also Cross Commerce Media, Inc. v. Collective, Inc., 841 F.3d 155, 166 (2d Cir. 

2016) (discussing that the alleged owner of a mark bears the burden of proving protected rights in 

a mark despite being declaratory judgment defendant). EA does not and cannot convincingly 

argue otherwise. Thus, to survive summary judgment, EA was required to produce sufficient 
5

evidence showing that the Marks are entitled to protection.

Second, EA is wrong in its contention that evidence of the Marks’ previous registrations 

was sufficient to meet its burden. EA’s argument is that the PTO’s prior registration of the Marks 

created a presumption that the Marks are currently protectable. EA is incorrect. Although “[a] 

certificate of registration with the PTO is prima facie evidence that the mark is registered and valid 

(i.e., protectible), that the registrant owns the mark, and that the registrant has the exclusive right 

to use the mark in commerce,” Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 

337, 345 (2d Cir. 1999), “[t]he presumption of [a mark’s protectability] that federal registration 

confers evaporates as soon as evidence of [the registration’s] invalidity is presented,” id. (quoting 

Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 172 (7th Cir. 1996)); see also 15 U.S.C. 

§ 1115(a). EA concedes that its registrations of the Marks were cancelled. As such, any

presumption of protectability that registration usually confers has “evaporate[d].” See Lane 

Capital Mgmt., Inc., 192 F.3d at 345. 

 Even if EA was entitled to a presumption of protectability, such a presumption is 

rebuttable. See id. (“[W]hen a plaintiff sues for infringement of its registered mark, the defendant 

bears the burden to rebut the presumption of mark’s [protectability] by a preponderance of the 

evidence.”). Here, NCE presented evidence sufficient to rebut any purported presumption of 

protectability, including uncontroverted evidence that it was the first user of the Marks in 

commerce. Compare App’x at 254–55 (NCE used the Marks in commerce as early as February 

2011), with Confidential App’x at 1 (EA used the Marks in commerce as early as December 2011). 

This is ultimately fatal to EA’s challenges to the summary judgment ruling. See Hana Fin., Inc. 

v. Hana Bank, 574 U.S. 418, 419 (2015) (“Rights in a trademark are determined by the date of the 
6

mark’s first use in commerce.”). In fact, EA has utterly failed to proffer any evidence rebutting 

NCE’s evidence that NCE—not EA—was the senior user of the Marks.3 Because EA did not

present evidence from which a reasonable factfinder could conclude that it was the senior user,

and, therefore, entitled to prevent NCE from using the Marks, it cannot meet its burden on 

summary judgment. See ITC Ltd., 482 F.3d at 147 (“[S]o long as a person is the first to use a 

particular mark to identify his goods or services in a given market, . . . he is ‘entitled to prevent 

others from using the mark to describe their own goods’ in that market.” (quoting Defiance Button 

Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053, 1059 (2d Cir. 1985))). As such, we 

affirm the district court’s grant of summary judgment in favor of NCE. 

III. EA Fails to Establish that the District Court Erred in Dismissing EA’s Third-Party 

Complaint Against the NY Fed

The district court did not abuse its discretion in dismissing EA’s third-party complaint

against the NY Fed because the NY Fed was not a proper third-party defendant. See Kenneth 

Leventhal & Co. v. Joyner Wholesale Co., 736 F.2d 29, 31 (2d Cir. 1984) (“The decision whether 

to permit a defendant to implead a third-party defendant rests in the trial court’s discretion.”

(citation omitted)).

First, EA has not shown that the NY Fed is or may be liable to it for NCE’s claim against 

EA for non-infringement. See Fed. R. Civ. P. 14(a)(1) (“A defending party may, as third-party 

plaintiff, serve a summons and complaint on a nonparty who is or may be liable to it for all or part 

of the claim against it.”). EA does not explain how the NY Fed would be liable to EA if NCE

3 EA contends that the district court made numerous evidentiary errors. Those contentions need not be addressed 

because, even if we assumed error, there is no evidence in the record establishing that EA was the first user of the 

Marks in commerce. And at no point in its briefing does EA contest this determinative issue.
7

was found to have infringed the Marks. Second, EA fails to articulate how its claims against the 

NY Fed depend on NCE’s claim against EA for non-infringement. See Bank of India v. Trendi 

Sportswear, Inc., 239 F.3d 428, 438 (2d Cir. 2000) (stating that an “impleader action must be 

dependent on, or derivative of, the main . . . claim”). For instance, in its third-party complaint, 

EA alleges that the NY Fed infringed the Marks itself and breached contracts between EA and the 

NY Fed. See Special App’x at 18–20. Those are separate and unrelated claims from the issue 

of whether NCE purportedly infringed the Marks. The fact that EA’s claims against the NY Fed 

involve the same marks at issue in the main claims does not, by itself, make a third-party action 

against the NY Fed proper under Rule 14(a)(1). Because EA fails to show that the NY Fed was 

a proper third-party defendant, it cannot establish that the district court abused its discretion in 

dismissing the third-party complaint as to the NY Fed. 

* * * 

We have considered EA’s remaining arguments and find them to be without merit. 

Accordingly, we AFFIRM the judgment of the district court. 

FOR THE COURT:

Catherine O’Hagan Wolfe, Clerk of Court