Judge Cote lets Blue Mineral's naked licensing counterclaims proceed in the Weather Brands trademark case

The order

The order is Document 231 in Weather Brands LLC v. Blue Mineral Corporation, No. 1:25-cv-02423 (DLC) (S.D.N.Y.), dated October 20, 2026. The plaintiff is Weather Brands LLC and the intervenor plaintiff is All Season Power LLC. The defendants who filed the counterclaims are Blue Mineral Corporation and an individual defendant.

Background

A December 11, 2025 order set January 16, 2026 as the deadline to amend pleadings. The defendants answered the first amended complaint on December 26, 2025 without counterclaims. All Season Power's motion to intervene was granted on May 11, 2026, and the plaintiffs filed a second amended complaint on July 24. The defendants' August 19 answer added three counterclaims, and the plaintiffs moved to dismiss them on September 2.

The counterclaims

Counterclaim I seeks a declaratory judgment against both plaintiffs of non-infringement, no false designation or unfair competition, no trade dress infringement, and no dilution. Counterclaim II seeks a declaratory judgment of genericness, descriptiveness, lack of acquired distinctiveness, narrow scope, and abandonment for the asserted registrations. Counterclaim III seeks cancellation and rectification of the register against Weather Brands for the same registrations. Counterclaims II and III allege, among other theories, that Weather Brands abandoned its trademark through naked licensing to All Season Power.

What the court decided

The court rejected the plaintiffs' argument that the defendants were not diligent. It noted the plaintiffs acknowledge that the naked licensing theory arises from events after the January 16 amendment deadline, and held that All Season Power's late intervention and the discovery that followed allow the counterclaims. It noted the plaintiffs do not dispute that Counterclaim I mirrors the claims in the second amended complaint, and that the defendants deny any intention to extend discovery based on the counterclaims. It granted the defendants' September 18 motion to file the counterclaims nunc pro tunc and denied the September 2 motion to dismiss. The ruling turned on diligence and timing; the naked licensing, genericness, and abandonment theories remain the defendants' allegations.