STATE OF NEW YORK

OFFICE OF THE ATTORNEY GENERAL

ERIC T. SCHNEIDERMAN

DIVISION OF STATE COUNSEL

ATTORNEY GENERAL

LITIGATION BUREAU

Writer Direct: (518) 776-2613

December 30, 2015
Honorable Mae A. D'Agostino
United States District Judge
United States District Court
Northern District of New York
James T. Foley - U.S. Courthouse
445 Broadway, Room 509
Albany, NY 12207-2924
Re:

Wandering Dago v. NYS OGS, et al

Northern District of New York
13-CV-1053 (MAD)(RFT)

Dear Judge D'Agostino:

This Office represents the remaining defendants in the above-referenced matter. We
submit this letter in response to the Letter of George C. Carpinello, Esq., counsel to plaintiff,
dated December 23, 2015. Despite plaintiffs suggestion to the contrary, the Federal Circuits
decision in In re Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 22300 (Fed. Cir. Dec. 22,
2015), has no relevance to the instant matter.
This Court previously decided to treat this case as a public forum case. Wandering
Dago, Inc. v. N.Y. State Office of Gen. Servs., 992 F. Supp. 2d 102, 115 n.4 (N.D.N.Y. 2014)
(Dkt. No. 54). Thus, this Court found that this case is most appropriately analyzed pursuant to
the forum analysis as set forth in this Courts decision. Id. But in In re Shiao Tam, Counsel for
the United States at oral argument disclaimed the notion that a government forum approach was
appropriate in the context of trademark registration. In re Shiao Tam, 2015 U.S. App. LEXIS
22300 at *72 n.12. Indeed, the Federal Circuit did not perform the analysis that this Court
previously held should control in this case, and thus, any reliance on In re Shiao Tam is
misplaced.

THE CAPITOL, ALBANY, NY 12224-0341 (518) 776-2300 FAX (518) 915-7738 * NOT FOR SERVICE OF PAPERS
WWW.AG.NY.GOV

December 30, 2015

Page 2
Plaintiff also suggests that Judge OMalleys concurring opinion in In re Shiao Tam is
relevant to this matter. Judge OMalley concluded that 2(a) of the Lanham Act was
unconstitutionally vague, which is not at issue here. See In re Shia Tam, 2015 U.S. App. LEXIS
22300, at *86 (OMalley, J., concurring). Moreover, Judge OMalley further noted that 2(a)
was applied inconsistently. In contrast, the defendants have consistently applied the policy of the
New York State Office of General Services to ensure a family friendly atmosphere for all. See
Rabito Decl. (Dkt. No. 155-3), 8-18.
For the reasons set forth herein, In re Shiao Tam has no relevance to the instant matter.
Accordingly, for the reasons set forth in defendants prior submissions, this Court should grant
defendants motion for summary judgment and dismiss this action in its entirety.
Thank you for your consideration of this matter.
Respectfully yours,

s/ Colleen D. Galligan
Colleen D. Galligan
Assistant Attorney General
Bar Roll No. 105167
Colleen.Galligan@ag.ny.gov

cc:

George F. Carpinello, Esq.

Boies, Schiller Law Firm
30 South Pearl Street, 11th Floor
Albany, NY 12207