Denimafia Inc. v. New Balance Athletic Shoe, Inc.
Filing
125
OPINION & ORDER re: 87 MOTION for Summary Judgment filed by New Balance Athletic Shoe, Inc., Foot Locker, Inc., The Sports Authority, Inc., Famous Horse, Inc. For the reasons set forth above, New Balance's motion for summary judgment (Dkt. N o. 87) is GRANTED. New Balance is to advise the Court by March 10, 2014 whether it voluntarily withdraws its counterclaims, which would moot Denimafia's cross-motion (Dkt. No. 91). (See page 2 n.2 above.) (Signed by Magistrate Judge Andrew J. Peck on 3/3/2014) (mro)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
------------------------------------- x
DENIMAFIA INC.,
:
Plaintiff,
-against-
:
12 Civ. 4112 (AJP)
:
OPINION & ORDER
NEW BALANCE ATHLETIC SHOE, INC., FOOT :
LOCKER, INC., THE SPORTS AUTHORITY, INC.
and FAMOUS HORSE, INC. d/b/a V.I.M.,
:
Defendants.
:
------------------------------------- x
NEW BALANCE ATHLETIC SHOE, INC.,
Counterclaim-Plaintiff,
-againstDENIMAFIA INC.,
:
:
:
:
Counterclaim-Defendant.
:
------------------------------------- x
ANDREW J. PECK, United States Magistrate Judge:
Denimafia brings this action against New Balance and retailers Foot Locker, Sports
Authority and Famous Horse (collectively, "New Balance") seeking damages for trademark
infringement (Count I), trademark counterfeiting (Count II) and federal unfair competition (Count
III) under the Lanham Act, 15 U.S.C. §§ 1114(a), 1125(a), as well as common law unfair
competition and misappropriation of intellectual property rights (Count IV), common law trademark
infringement (Count V) and deceptive trade practices (Count VI) under New York law. (Dkt. No.
33: Am. Compl. ¶¶ 40-75.) New Balance counterclaimed for cancellation of Denimafia's trademark
2
registration alleging fraud (Counterclaim I) and nonuse (Counterclaim II) under the Lanham Act,
15 U.S.C. §§ 1064, 1068, 1119. (Dkt. No. 37: Ans. & Counterclaims ¶¶ 54-77.)1/
The parties have cross-moved for summary judgment. (Dkt. No. 87: New Balance
Notice of Motion; Dkt. No. 91: Denimafia Notice of Motion.) The parties have consented to my
decision of this case pursuant to 28 U.S.C. § 636(c). (Dkt. No. 28: Consent to Magistrate Judge
Jurisdiction.) For the reasons set forth below, New Balance's motion is GRANTED.2/
FACTS
The Parties
Denimafia
Denimafia is a New York-based company founded in 2001 by Christine Rucci, a
thirty-year veteran of the fashion industry with an expertise in denim. (Dkt. No. 89: Defs. Rule 56.1
1/
Defendants Foot Locker, The Sports Authority and Famous Horse answered without
asserting counterclaims. (See Dkt. No. 47: Foot Locker Ans.; Dkt. No. 49: Sports Authority
Ans.; Dkt. No. 51: Famous Horse Ans.)
2/
Denimafia's motion is limited to seeking to dismiss New Balance's second counterclaim,
which asserts that Denimafia abandoned any rights in the <=> mark and seeks cancellation
of Denimafia's trademark registration for nonuse pursuant to 15 U.S.C. §§ 1068, 1119.
(Denimafia Notice of Motion; see Ans. & Counterclaims ¶¶ 68-77: Countercl. II.) The
parties' submissions also indicate that New Balance may have agreed to withdraw some or
all of its counterclaims, including its fraud-based first counterclaim, in exchange for
Denimafia's voluntary amendment of its trademark registration. (Dkt. No. 89: Defs. Rule
56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶ 27; Dkt. No. 90: Edelman Aff. Ex.
23: 11/3/13 Benjamin Letter; Edelman Aff. Ex. 22: 11/6/13 Hosp Letter; Dkt. No. 109:
Benjamin Aff. Ex. 48: 11/15/13 Section 7 Trademark Amendment Request; Benjamin Aff.
Ex. 49: 11/15/13 Hosp & Benjamin Emails; see Ans. & Counterclaims ¶¶ 54-67: Countercl.
I.) Denimafia's cross-motion may be moot in light of today's decision and the parties'
discussions. New Balance is to advise the Court by March 10, 2014 whether it voluntarily
withdraws its counterclaims.
3
Stmt. ¶¶ 1-3;3/ Dkt. No. 106: Rucci Aff. ¶¶ 1-4.) In 2003, Denimafia began its "5EP" denim and
clothing line with the goal of reaching eleven million dollars in annual sales by 2010. (Defs. Rule
56.1 Stmt. ¶¶ 2-3; Rucci Aff. ¶ 5.) Rucci's February 12, 2003 applications for federal registrations
for the "5EP" word mark and the "<=>" design mark were granted on June 1, 2004. (Defs. Rule 56.1
Stmt. ¶ 4; Rucci Aff. ¶ 14; Dkt. No. 90: Edelman Aff. Ex. 7: USPTO Status Report for Reg. No.
2,849,712; Edelman Aff. Ex. 8: USPTO Status Report for Reg. No. 2,849,714.) In 2006, along with
other joint venturers, Denimafia formed 5EP Studio Inc., the entity through which Denimafia's 5EP
clothing line would be sold, and Rucci transferred the 5EP and <=> marks to 5EP Studio. (Defs.
Rule 56.1 Stmt. ¶¶ 6-7; Edelman Aff. Ex. 9: 1/1/06 Letter Agmt.; Edelman Aff. Ex. 12: 10/30/06
Trademark Assignment.)
From 2004 through 2007, Rucci operated Denimafia and 5EP Studio out of her home
and/or another company's office. (Defs. Rule 56.1 Stmt. ¶¶ 5, 8; Denimafia Rule 56.1 Counter-Stmt.
¶ 8; Rucci Aff. ¶¶ 2, 36.) In 2007, Rucci and the other 5EP Studio investors disagreed about
advertising and promotional spending and Rucci's employment contract was not renewed. (Defs.
Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶ 9; Rucci Aff. ¶¶ 40-42.) After 2008, neither
Denimafia nor 5EP Studio manufactured any new products bearing the <=> mark. (Defs. Rule 56.1
Stmt. ¶ 10.)4/ As of August 3, 2010, the remaining 5EP Studio inventory "consisted of fragmented
3/
Denimafia's Rule 56.1 Counter-Stmt. (Dkt. No. 108) only responded to the paragraphs of
defendants' Rule 56.1 Stmt. that Denimafia disputed. Unless otherwise indicated, therefore,
the Court's citations to Defs. Rule 56.1 Stmt. are to those paragraphs conceded by Denimafia
to be undisputed.
4/
Since 2008, Denimafia has offered fashion consulting services such as advising clients on
the selection and use of textiles. (Defs. Rule 56.1 Stmt. ¶ 17; Denimafia Rule 56.1 CounterStmt. ¶¶ 17, 28; Rucci Aff. ¶ 4.)
4
sizes (not enough quantity in each size), making it impossible to sell to retailers." (Denimafia Rule
56.1 Counter-Stmt. ¶ 13; Rucci Aff. ¶ 48; Dkt. No. 109: Benjamin Aff. Ex. 37: 8/3/10 Rucci Email.)
The 5EP Studio joint venture formally dissolved in December 2010. (Defs. Rule 56.1
Stmt. & Denimafia Counter-Stmt. ¶ 11; Rucci Aff. ¶ 49; Benjamin Aff. Ex. 36: 7/12/10 Dissolution
Notice.) Under the dissolution agreement, 5EP Studio granted Denimafia a perpetual license "to
manufacture, use and distribute any products in the field of high quality jeans, outerwear, knits,
pants and shirts under 5EP's trademark, namely '5EP' and all its derivatives." (Edelman Aff. Ex. 10:
Joint Venture Termination Agmt. § 5; see Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶ 15;
Rucci Aff. ¶ 50.) 5EP Studio assigned the 5EP and <=> marks to Parotex, Inc., a company owned
by one of the other 5EP Studio joint venturers. (Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt.
¶ 14; Edelman Aff. Ex. 17: 1/12/11 Assignment of Assets.)
New Balance
New Balance was founded in 1906 and is one of the world's largest manufacturers
and distributers of athletic footwear and athletic apparel. (Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶¶ 8788.) In 2009, New Balance began work on a performance shoe designed "to provide a closer-tobarefoot experience than that delivered by ordinary athletic shoes" and "to encourage a more natural
foot position and foot-strike, while also reducing the weight of the shoe." (Defs. Rule 56.1 Stmt.
¶¶ 89-91.) In 2010, New Balance labeled the performance footwear its "Minimus" collection,
named for the minimalist shoe design. (Defs. Rule 56.1 Stmt. ¶ 90.) The Minimus collection is
New Balance's most technical product line. (Defs. Rule 56.1 Stmt. ¶¶ 91-92, 108; Dkt. No. 108:
5
Denimafia Rule 56.1 Counter-Stmt. ¶¶ 92, 108; Dkt. No. 109: Benjamin Aff. Ex. 3: Kligerman Dep.
at 19-26.)5/
The <=> Mark
The Trademark Registration
On January 7, 2011, the original registrations for the 5EP and <=> marks were
cancelled for failure to file a statement of continuing use.6/ Parotex applied for new trademark
registrations in February 2011, which were granted on August 30, 2011.7/ In May 2012, Parotex
assigned the 5EP and <=> marks to Denimafia in exchange for $5,001.8/ Denimafia owns the
current trademark registration for the <=> design mark, Registration Number 4,019,180. (Defs.
Rule 56.1 Stmt. ¶ 19; Edelman Aff. Ex. 18: USPTO Status Report for Reg. No. 4,019,180.)
The <=> mark registration describes the design as follows: "The mark consists of two
horizontal parallel lines in the middle space between a right pointing arrowhead with curved sides
5/
The retailer defendants, Foot Locker, Sports Authority and Famous Horse, are sued because
they sell New Balance's products. (Defs. Rule 56.1 Stmt. ¶¶ 93-96; Denimafia Rule 56.1
Counter-Stmt. ¶¶ 93, 96.) Denimafia did not conduct any discovery relating to the retailer
defendants and produced no evidence as to the retailer defendants' liability. (Defs. Rule 56.1
Stmt. ¶¶ 97-98.)
6/
Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶ 16; Dkt. No. 90: Edelman Aff. Ex. 7: USPTO Status
Report for Reg. No. 2,849,712; Edelman Aff. Ex. 8: USPTO Status Report for Reg. No.
2,849,714; Edelman Aff. Ex. 13: 1/27/11 Rucci Email.
7/
Defs. Rule 56.1 Stmt. ¶¶ 16, 19; Dkt. No. 109: Benjamin Aff. Ex. 44: Reg. No. 4,019,180;
Benjamin Aff. Ex. 45: Reg. No. 4,019,071; Edelman Aff. Ex. 18: USPTO Status Report for
Reg. No. 4,019,180.
8/
Defs. Rule 56.1 Stmt. ¶ 18; Edelman Aff. Ex. 19: 5/21/12 Trademark Assignment; Edelman
Aff. Ex. 20: 5/21/12 Trademark Assignment Execution Agmt.; Edelman Aff. Ex. 1: Rucci
Dep. at 211-12.
6
and a left pointing arrow head with curved sides." (Benjamin Aff. Ex. 44: Reg. No. 4,019,180; see
Defs. Rule 56.1 Stmt. ¶ 20; Edelman Aff. Ex. 18: USPTO Status Report for Reg. No. 4,019,180.)
The <=> mark was registered for: "Clothing, namely, t-shirts, jeans, jackets, sports
jackets, parkas, ponchos, shirts, pants, underwear, skirts, dresses, shorts, trousers, socks, shoes,
footwear, hosiery, scarves and hats." (Benjamin Aff. Ex. 44: Reg. No. 4,019,180; Edelman Aff. Ex.
18: USPTO Status Report for Reg. No. 4,019,180; Defs. Rule 56.1 Stmt. ¶ 21.) The list of goods
in the registration was based solely on the information in the first, cancelled <=> trademark
registration.9/ The <=> mark was never used on many of the goods listed in the registration
including, inter alia, socks, shoes and footwear.10/ On November 15, 2013, Denimafia filed a request
to amend Registration Number 4,019,180 "by deleting the following: 'parkas, ponchos, underwear,
shorts, socks, shoes, footwear, hosiery, scarves and hats.'"11/
Strength of the <=> Mark
Denimafia sells its clothing under the brand name 5EP, based on the phrase "'5 easy
pieces,'" which represents "an underlying concept that informs the 5EP collection, namely, the idea
9/
Defs. Rule 56.1 Stmt. ¶¶ 16, 22; Dkt. No. 108: Denimafia Rule 56.1 Counter-Stmt. ¶ 24;
Edelman Aff. Ex. 14: Goldman Dep. at 157-58; Edelman Aff. Ex. 18: USPTO Status Report
for Reg. No. 4,019,180 at NB0163460; see Edelman Aff. Ex. 8: USPTO Status Report for
Reg. No. 2,849,714.
10/
Defs. Rule 56.1 Stmt. ¶¶ 23-27; Denimafia Rule 56.1 Counter-Stmt. ¶¶ 24-25, 27; Edelman
Aff. Ex. 1: Rucci Dep. at 164-68; Edelman Aff. Ex. 21: Denimafia Am. Resp. to 1st Reqs.
for Admission Nos. 36-38, 42-47.
11/
Benjamin Aff. Ex. 48: 11/15/13 Section 7 Trademark Amendment Request; see Defs. Rule
56.1 Stmt. & Denimafia Counter-Stmt. ¶ 27; Edelman Aff. Ex. 23: 11/3/13 Benjamin Letter;
Edelman Aff. Ex. 22: 11/6/13 Hosp Letter; Benjamin Aff. Ex. 49: 11/15/13 Benjamin Email.
7
that everyone needs 5 really good pieces in their wardrobe."12/ Denimafia's 5EP brand uses the <=>
design, which reflects the brand's "'less is more' approach and design aesthetic."13/
The "'less is more'" concept is used widely with consumer products and the concept
"is ubiquitous in fashion, and design more generally."14/ Both the <=> design and the "'less is more'"
phrase also are used by third parties.15/ The regular use of the <=> symbol without explanation as
to its meaning "suggest[s] consumers understand [its] meaning as 'less is more'; otherwise [its] use
12/
Dkt. No. 108: Denimafia Rule 56.1 Counter-Stmt. ¶¶ 28-30; Dkt. No. 89: Defs. Rule 56.1
Stmt. ¶¶ 28-30, 45; Dkt. No. 106: Rucci Aff. ¶¶ 10-12; Dkt. No. 90: Edelman Aff. Ex. 1:
Rucci Dep. at 39-40, 47, 66, 68-71; Edelman Aff. Ex. 2: 2005 Bus. Plan; Edelman Aff. Ex.
6: Denimafia Homepage; Edelman Aff. Ex. 24: 2008 Bus. Plan; Edelman Aff. Ex. 25: 2010
Bus. Plan; Edelman Aff. Ex. 27: 6/8/12 Denimafia Facebook Post; Edelman Aff. Ex. 32: The
Denim Bible: Jeans Encyclopedia II 133 (C. Blomquist rev. ed.); Edelman Aff. Ex. 47: 5EP
Label Background.
13/
Defs. Rule 56.1 Stmt. ¶¶ 31-35; Rucci Aff. ¶¶ 8-9, 11-12; Edelman Aff. Ex. 1: Rucci Dep.
at 74; Edelman Aff. Ex. 27: 6/8/12 Denimafia Facebook Post; Edelman Aff. Ex. 28: Turner
Dep. at 15-16; Edelman Aff. Ex. 29: Blundell Dep. at 60-62; Edelman Aff. Ex. 30:
Blomquist Dep. at 47, 63-64; Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶¶
11, 16; Edelman Aff. Ex. 32: The Denim Bible: Jeans Encyclopedia II 133.
14/
Defs. Rule 56.1 Stmt. ¶¶ 38-39; Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report
¶¶ 36-38; Edelman Aff. Ex. 36: Harriet Walker, Less is More: Minimalism in Fashion
(Merrell 2011); see Denimafia Rule 56.1 Counter-Stmt. ¶ 39.
15/
Defs. Rule 56.1 Stmt. ¶ 37; Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶¶ 3638 & nn.9-11; Edelman Aff. Ex. 33: Third-Party Website Screen Shots; Edelman Aff. Exs.
34 & 35: Reg. Nos. 4,292,788 & 4,292,789: Less Equals More LLC Registrations for <=>
Design Mark.
Denimafia asserts that it "has taken steps to stop other third party infringers, including some
of those specifically cited by Defendants." (Denimafia Rule 56.1 Counter-Stmt. ¶ 37; Rucci
Aff. ¶ 65.) All of the "cease and desist letters" submitted by Denimafia post-date this
lawsuit. (Dkt. No. 109: Benjamin Aff. Ex. 10: 9/9/13 Rucci Email & Letter to Redbubble,
9/5/13 Rucci Emails to Zazzle, 10/12-12/20/12 Emails & Letters between Rucci's Counsel
and Counsel for Finis; see Dkt. No. 1: 5/23/12 Compl.)
8
would be nonsensical." (Defs. Rule 56.1 Stmt. ¶ 40; see Edelman Aff. Ex. 31: Handley Aff. Ex. 1:
Handley Report ¶¶ 36-38; Edelman Aff. Ex. 33: Third-Party Website Screen Shots.)
Denimafia's Use of the <=> Mark
The style of Denimafia's mark reflects the vintage themes that influenced the brand's
products each season.16/ Denimafia's design uses a bold typeface with curved arms in the greaterthan and less-than symbols, giving the mark "an antique feel" that "makes the symbols appear to be
a stamp." (Defs. Rule 56.1 Stmt. ¶¶ 42-43.)
On its website, promotional materials, invoices and business plans, Denimafia always
uses the mark in conjunction with the Denimafia and/or 5EP brand names, which are displayed in
larger font than the <=> mark.17/ On the products themselves, however, Denimafia uses the <=>
mark both alone and in conjunction with the brand names. (Defs. Rule 56.1 Stmt. & Denimafia
Counter-Stmt. ¶ 44; Rucci Aff. ¶ 12.) On the labels sewn into the products, the <=> mark always
is used in conjunction with the Denimafia and/or 5EP brand names, which are displayed in larger
font than the <=> mark. (Defs. Rule 56.1 Stmt. ¶ 44; Am. Compl. Ex. 3: Denimafia Product
Photos.)18/ On hangtags pinned to the products, the mark always is used in conjunction with the 5EP
16/
Dkt. No. 89: Defs. Rule 56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶¶ 41, 43; Dkt.
No. 106: Rucci Aff. ¶¶ 66-67; Dkt. No. 90: Edelman Aff. Ex. 1: Rucci Dep. at 77-78;
Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶ 41; Edelman Aff. Ex. 37: Fall
2007 5EP Press Release; Edelman Aff. Ex. 38: Rucci Interview; Edelman Aff. Ex. 47: 5EP
Label Background.
17/
Defs. Rule 56.1 Stmt. ¶ 44; Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶ 42;
Edelman Aff. Ex. 6: Denimafia Homepage; Dkt. No. 33: Am. Compl. Ex. 6: Denimafia
Homepage, Promotional Materials & Invoices; Edelman Aff. Exs. 39-46: Denimafia
Invoices; Edelman Aff. Ex. 2: 2005 Bus. Plan; Edelman Aff. Ex. 24: 2008 Bus. Plan;
Edelman Aff. Ex. 25: 2010 Bus. Plan.
18/
The mark is used alone on the secondary tags that identify the fabric and country of origin,
(continued...)
9
brand name, which appears on the top of the tag in a comparatively much smaller font. (Defs. Rule
56.1 Stmt. ¶ 44; Am. Compl. Ex. 3: Denimafia Product Photos.) The mark sometimes is used alone
on t-shirt designs, on the buttons on some pants and jackets, and in the stitching on the back pockets
of jeans. (Rucci Aff. ¶ 12; Am. Compl. Ex. 3: Denimafia Product Photos; Am. Compl. Exs. 4 & 5:
Denimafia Product Display Photos.) In its product displays, Denimafia uses the mark alone on its
clothing hangers and in conjunction with the brand names on its signage. (Defs. Rule 56.1 Stmt. &
Denimafia Counter-Stmt. ¶ 44; Rucci Aff. ¶ 12; Am. Compl. Ex. 3: Denimafia Product Photos; Am.
Compl. Exs. 4 & 5: Denimafia Product Display Photos.)
New Balance's Use of the <=> Design
In March 2010, New Balance commissioned advertising agency StrawberryFrog to
assist with the launch of the Minimus collection. (Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶ 99.)
StrawberryFrog pitched concepts representing "'the ethos for the product'" that included a
"'Minimalist Manifesto,'" the "'Less is More'" phrase, and the <=> design. (Defs. Rule 56.1 Stmt.
¶¶ 100-01.) In April 2010, StrawberryFrog's counsel performed a trademark search for the <=>
design at New Balance's request. (Defs. Rule 56.1 Stmt. ¶ 103.) Upon discovering Denimafia's
registration, New Balance asked StrawberryFrog to stylize the <=> design to better represent New
Balance's brand and further distinguish it from Denimafia's mark. (Defs. Rule 56.1 Stmt. ¶ 104.)19/
18/
(...continued)
which are sewn into the inside of pant waistbands or directly below the primary label sewn
into the inside of shirts and jackets. (Am. Compl. Ex. 3: Denimafia Product Photos.)
19/
StrawberryFrog produced three design options: one in a Cooper Standard font in which the
"compressed angles of the arrows require more distance from the equal sign," and two that
used custom ninety-degree angles for the arrows, one with sharp corners and the other with
rounded corners. (Dkt. No. 109: Benjamin Aff. Ex. 27: 5/6/10 Baldridge Email; Defs. Rule
56.1 Stmt. ¶ 104.) StrawberryFrog recommended the customized design with sharp corners
(continued...)
10
In May 2010, New Balance selected the Cooper Standard font design because it
"reinforce[d] the technical, minimalist design ethos" of the Minimus collection and "the overall NB
Minimus brand message 'less is more.'"20/ New Balance's final <=> design uses a "modern typeface
with straight lines, solid printing, and more elongated presentation." (Defs. Rule 56.1 Stmt. ¶ 110.)
The design is "crisp and strong and highly similar in overall appearance to the NEW BALANCE
and MINIMUS word marks." (Defs. Rule 56.1 Stmt. ¶ 112.)
The <=> design is used on the tongue and sock lining of some Minimus collection
footwear. (Defs. Rule 56.1 Stmt. ¶ 109.) New Balance usually uses the <=> design in conjunction
with its "famous NEW BALANCE, NB, N, and MINIMUS trademarks." (Defs. Rule 56.1 Stmt. ¶
111.)
19/
(...continued)
because the ninety-degree angles allowed the "pieces to come closer together and feel[]
locked to each other, creating one unit," whereas the added distance between the symbols
in the Cooper Standard font design created the effect of "3 separate parts instead of the
illusion of one overall unit." (Benjamin Aff. Ex. 27: 5/6/10 Baldridge Email.)
StrawberryFrog felt "that using a standard font [i.e., Cooper Standard] hurts the ownability
of the mark." (Benjamin Aff. Ex. 27: 5/6/10 Baldridge Email; see Dkt. No. 108: Denimafia
Rule 56.1 Counter-Stmt. ¶ 105.)
20/
Defs. Rule 56.1 Stmt. ¶¶ 105-07, 113-14; Dkt. No. 90: Edelman Aff. Ex. 85: Petrecca Aff.
¶¶ 4-6; Edelman Aff. Ex. 98: Petrecca 10/18/13 Dep. at 16; see Denimafia Rule 56.1
Counter-Stmt. ¶¶ 105, 113-14.
11
The Marketplace 21/
Products
Denimafia's 5EP products have included men's t-shirts, woven shirts, jackets, chinos
jeans, and casual suits, as well as women's dresses and skirts.22/ Denimafia's denim products
originally were made from an expensive, uncommon textile known as "'selvedge' denim," although
one custom order was made from a lower priced denim.23/ Denimafia has never sold socks, shoes
or footwear of any kind.24/
New Balance's Minimus collection of three athletic shoe models was released into
retail outlets in March 2011. (Defs. Rule 56.1 Stmt. ¶¶ 92, 108; Edelman Aff. Ex. 83: Petrecca
10/7/13 Dep. at 68-69.) The Minimus collection since has expanded to include "performance
running apparel, sandals, socks, other outdoor products, water shoes, multisport training shoes, and
21/
Defendants submitted an expert report about the shoe and apparel industry. (See Dkt. No.
89: Defs. Rule 56.1 Stmt. ¶ 122.) Denimafia did not submit any rebuttal expert report. (See
Defs. Rule 56.1 Stmt. ¶¶ 124-25.)
22/
Dkt. No. 89: Defs. Rule 56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶¶ 45-46, 59;
Dkt. No. 106: Rucci Aff. ¶ 20; Dkt. No. 90: Edelman Aff. Ex. 31: Handley Aff. Ex. 1:
Handley Report ¶ 24.
23/
Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶¶ 46-47; Rucci Aff. ¶¶ 21, 27; Edelman
Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶ 44; Edelman Aff. Ex. 2: 2005 Bus. Plan;
Edelman Aff. Ex. 24: 2008 Bus. Plan; Edelman Aff. Ex. 25: 2010 Bus. Plan; Edelman Aff.
Ex. 30: Blomquist Dep. at 60-61.
24/
Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶ 60; Rucci Aff. ¶ 69; Edelman Aff. Ex.
1: Rucci Dep. at 258; Edelman Aff. Ex. 21: Denimafia Am. Resp. to 1st Reqs. for Admission
Nos. 36-38, 42-47, 51-53.
12
kids' shoes," but New Balance uses the <=> design "to a much lesser extent" on these related
products.25/
Marketing
Denimafia has marketed its products by maintaining an online presence, including
its own website, its Facebook page and discussions on fashion-related Internet forums, by attending
trade shows, and, prior to 2009, by offering its products in boutique stores and by guerilla marketing
such as spray-painting sidewalks.26/
New Balance uses a wide range of marketing avenues, including point-of-purchase
in-store materials, public relations, events, social media, and print, television and Internet
advertisements. (Defs. Rule 56.1 Stmt. ¶ 119.) New Balance produced promotional t-shirts using
the <=> design, which it distributed to retailers in connection with its sale of Minimus products; the
t-shirts were never sold. (Defs. Rule 56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶ 121.)
Distribution
Denimafia's 5EP products have not been available for purchase through Denimafia's
website since 2008. (Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶ 53; Dkt. No. 90: Edelman Aff. Ex. 1:
Rucci Dep. at 256-57.)27/ In 2009, 5EP products were sold in one retail outlet. (Defs. Rule 56.1
25/
Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶¶ 115-16; Edelman Aff. Ex. 31: Handley
Aff. Ex. 1: Handley Report ¶ 24. New Balance has never sold denim products or jeans of
any kind. Defs. Rule 56.1 Stmt. ¶ 117; Edelman Aff. Ex. 85: Petrecca Aff. ¶ 8.
26/
Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶¶ 48-50; Dkt. No. 106: Rucci Aff. ¶¶ 24-26, 28-29, 31;
Dkt. No. 109: Benjamin Aff. Ex. 24: 2004/2005 5EP Marketing Photos; Dkt. No. 90:
Edelman Aff. Ex. 1: Rucci Dep. at 122-23, 255-57; Edelman Aff. Ex. 21: Denimafia Am.
Resp. to 1st Reqs. for Admission Nos. 77; Edelman Aff. Ex. 29: Blundell Dep. at 30-31;
Edelman Aff. Ex. 49: Denimafia 3d Interrog. Resp. Nos. 20-21.
27/
There is no evidentiary support for Denimafia's statement that it intends to "revamp its
(continued...)
13
Stmt. ¶ 51; Edelman Aff. Ex. 1: Rucci Dep. at 131.) Since 2009, the only way to purchase 5EP
products is by contacting Rucci directly to make an inquiry.28/
Denimafia never sold its products in any sporting goods stores and its products were
never sold in any retail outlet that also sold New Balance's products.29/ Denimafia and New Balance
admittedly are not competitors.30/
New Balance's products are sold through online and brick-and-mortar speciality
athletic and footwear retailers, as well as through New Balance's own stores and website. (Defs.
Rule 56.1 Stmt. ¶ 118; Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶ 21; Edelman
Aff. Ex. 53: Meyer Aff. Ex. 1: Meyer Report ¶¶ 16, 21.) Some New Balance products, including
products from the Minimus collection, also are sold through general retail outlets. (Denimafia Rule
56.1 Counter-Stmt. ¶ 118; Dkt. No. 109: Benjamin Aff. Exs. 14-23: Screen Shots of General Retailer
Websites.)
27/
(...continued)
website" to include an online shopping function "once this litigation is resolved." (See Dkt.
No. 108: Denimafia Rule 56.1 Counter-Stmt. ¶ 53; Dkt. No. 106: Rucci Aff. ¶ 68.)
28/
Defs. Rule 56.1 Stmt. ¶¶ 51-52, 73-74; Denimafia Rule 56.1 Counter-Stmt. ¶ 52; Rucci Aff.
¶ 31; Edelman Aff. Ex. 1: Rucci Dep. at 256-57; Edelman Aff. Ex. 21: Denimafia Am. Resp.
to 1st Reqs. for Admission Nos. 69-72; Edelman Aff. Ex. 50: 2011 Individual Purchase
Emails.
29/
Defs. Rule 56.1 Stmt. ¶¶ 55-56; Edelman Aff. Ex. 1: Rucci Dep. at 250-51; Edelman Aff.
Ex. 21: Denimafia Am. Resp. to 1st Reqs. for Admission No. 74.
30/
Defs. Rule 56.1 Stmt. ¶¶ 57-58, 137; Edelman Aff. Ex. 1: Rucci Dep. at 248-49; Edelman
Aff. Ex. 29: Blundell Dep. at 65; Edelman Aff. Ex. 30: Blomquist Dep. at 110; Edelman Aff.
Ex. 49: Denimafia 3d Interrog. Resp. No. 22; Edelman Aff. Ex. 53: Meyer Aff. Ex. 1: Meyer
Report ¶ 21.
14
Denimafia's Expansion Plans
Denimafia asserts that one of the 5EP investors "discussed a possible collaboration
with Converse, the sneaker company," and that 5EP "considered producing flip flops to give away
as promotional items," but there is no evidence that Denimafia ever developed any plans to design
or sell shoes or athletic apparel.31/ Denimafia asserts that 5EP "has always intended to expand into
[the footwear] area," and that these plans were omitted from the potential areas of expansion
identified in Denimafia's business plans because they could not "be accomplished in the immediate
future." (Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶¶ 60-61; Rucci Aff. ¶¶ 69-70; see
Edelman Aff. Exs. 2, 24-25: 2005, 2008 & 2010 Bus. Plans.) The potential areas of expansion
identified in Denimafia's business plans, which included women's and children's casualwear lines,
only were used with potential investors and were not disclosed to prospective customers.32/
Denimafia's Consumers and Sales
Denimafia's consumers are highly sophisticated, brand discerning, detail oriented,
and well informed about denim products.33/
From 2004 to 2006, Denimafia sold approximately $328,000 worth of clothing.
(Defs. Rule 56.1 Stmt. ¶ 68.) In 2007—the last year Denimafia produced a new line—it sold
approximately $170,000 worth of clothing. (Defs. Rule 56.1 Stmt. ¶ 71.) Thereafter, sales were
31/
Dkt. No. 89: Defs. Rule 56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶ 60; Dkt. No.
106: Rucci Aff. ¶ 39; Dkt. No. 109: Benjamin Aff. Ex. 32: Guy Dep. at 79-80; Dkt. No. 90:
Edelman Aff. Ex. 1: Rucci Dep. at 258-59; Edelman Aff. Ex. 30: Blomquist Dep. at 110.
32/
Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶¶ 61-62; Rucci Aff. ¶¶ 70-71; Edelman
Aff. Ex. 1: Rucci Dep. at 68, 90-93, 100-02, 110-14; see Edelman Aff. Exs. 2, 24-25: 2005,
2008 & 2010 Bus. Plans.
33/
Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶¶ 63-66; Dkt. No. 106: Rucci Aff. ¶ 72; Dkt. No. 90:
Edelman Aff. Ex. 1: Rucci Dep. at 251; Edelman Aff. Ex. 29: Blundell Dep. at 52-53, 56-57;
Edelman Aff. Ex. 30: Blomquist Dep. at 66-67, 106-07.
15
limited to leftover stock and custom orders, and the annual figures declined to $35,000 in 2008,
$8,500 in 2009, $1,000 in 2010, $3,800 in 2011, $340 in 2012 and $760 in 2013. (Defs. Rule 56.1
Stmt. ¶ 71.)34/
Denimafia did not offer any evidence concerning the value of its brand prior to New
Balance's use of the <=> design. (Defs. Rule 56.1 Stmt. ¶¶ 78-79.)
Actual Confusion
Denimafia's Evidence
Denimafia did not conduct a survey to gauge confusion in the marketplace. (Dkt. No.
89: Defs. Rule 56.1 Stmt. ¶ 85; Dkt. No. 90: Edelman Aff. ¶ 14; Dkt. No. 106: Rucci Aff. ¶ 77.)
Instead, Denimafia submitted anecdotal evidence from five individuals with whom Rucci had
previously-established personal and professional relationships: Carole Del Signore, David Blundell,
Wendy Schecter, Lisa Antonelli and Renee Barletta.35/
On March 22, 2012, Antonelli sent a text message to Rucci attaching a picture of an
advertisement for New Balance's Minimus line from the March 22, 2012 issue of AM New York,
and stating: "Christopher just pointed ad out to me! Front cover AM newspaper."36/ Antonelli was
not making a purchasing decision at the time she viewed the advertisement. (Defs. Rule 56.1 Stmt.
34/
Denimafia attributes the decline to a variety of outside factors, including economic downturn
and disputes among investors. (See Defs. Rule 56.1 Stmt. ¶ 77.)
35/
Defs. Rule 56.1 Stmt. ¶¶ 80-81; Rucci Aff. ¶¶ 61-64; Edelman Aff. Ex. 1: Rucci Dep. at 213,
217, 220, 227-28, 230, 233; Edelman Aff. Ex. 5: Antonelli Dep. at 14-17, 23; Edelman Aff.
Ex. 21: Denimafia Am. Resp. to 1st Reqs. for Admission Nos. 80-82; Edelman Aff. Ex. 29:
Blundell Dep. at 17-20; Edelman Aff. Ex. 69: Denimafia Supp. Interrog. Resp. No. 1;
Edelman Aff. Ex. 70: Barletta Dep. at 15-17; Edelman Aff. Ex. 71: Del Signore Dep. at 1617; Edelman Aff. Ex. 72: Schecter Dep. at 19-21.
36/
Dkt. No. 109: Benjamin Aff. Ex. 55: 3/22/12 Antonelli Text Message; see Benjamin Aff. Ex.
29: 3/22/12 New Balance AM New York Ad.; Rucci Aff. ¶ 62; Edelman Aff. Ex. 1: Rucci
Dep. at 230-33; Edelman Aff. Ex. 5: Antonelli Dep. at 50.
16
¶ 82; Antonelli Dep. at 51.) Antonelli was not confused by the newspaper advertisement as to the
relationship between Denimafia and New Balance; she understood that they were separate
companies and that New Balance was the source of the advertised sneakers. (Antonelli Dep. at 5051.)
On or about March 22, 2012, Schecter saw the same New Balance Minimus
advertisement in the March 22, 2012 issue of AM New York. (Edelman Aff. Ex. 72: Schecter Dep.
at 30-31, 34-37; Rucci Aff. ¶ 62.) Schecter told Rucci about the advertisement over the phone that
day, and Rucci asked Schecter to document it in writing.37/ On or about April 28, 2012, Schecter
sent a text message to Rucci stating: "Been traveling like crazy sorry [I]'ve been out of touch. . . .
[S]aw a w[ei]rd ad in am ny for new balance did u do a collaboration cuz it was your 5ep logo [sic]."
(Benjamin Aff. Ex. 57: 4/28/12 Schecter Text Message; Schecter Dep. at 39-41.) Schecter was not
making a purchasing decision at the time she viewed the advertisement. (Defs. Rule 56.1 Stmt. ¶
82; Schecter Dep. at 31-32.) The newspaper advertisement caused Schecter to believe that
Denimafia and New Balance could have been working on a collaboration. (Schecter Dep. at 31, 3637.)
In approximately late March or early April 2012, Del Signore saw an advertisement
for New Balance's Minimus line in the window of a New Balance store in Manhattan. (Edelman
Aff. Ex. 71: Del Signore Dep. at 54-56; see Benjamin Aff. Ex. 94: New Balance Fifth Ave. Window
Ad.; Rucci Aff. ¶ 61.) Del Signore told Rucci about the advertisement on April 4, 2012, and Rucci
asked Del Signore to document it in writing.38/ On April 5, 2012, Del Signore emailed Rucci: "I saw
37/
Defs. Rule 56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶¶ 83-84; Rucci Aff. ¶ 64;
Edelman Aff. Ex. 1: Rucci Dep. at 260-61; Schecter Dep. at 30-31, 37, 39-41.
38/
Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶¶ 83-84; Rucci Aff. ¶ 64; Edelman Aff.
(continued...)
17
your logo in the window of New Balance on W 20th St and 5th Ave, the corner by my office.
Congratulations – that's BIG!" (Benjamin Aff. Ex. 56: 4/5/12 Del Signore Email; see Benjamin Aff.
Ex. 94: New Balance Fifth Ave. Window Ad.) Del Signore was not making a purchasing decision
at the time she viewed the window advertisement, and she has not purchased any Denimafia or New
Balance products since the date of the email. (Defs. Rule 56.1 Stmt. ¶ 82; Del Signore Dep. at 65,
68.) The window advertisement caused Del Signore to speculate that Denimafia and New Balance
could have been working on a collaboration, but she understood New Balance to be the source of
the footwear and athletic apparel she saw in the window displaying the advertisement. (Del Signore
Dep. at 54-55, 62-66.)
On or about May 9, 2012, Blundell was shopping for New Balance running sneakers
on the New Balance website when he saw the <=> design used in connection with the Minimus line.
(Edelman Aff. Ex. 29: Blundell Dep. at 70-73.) Blundell speculated that Denimafia and New
Balance could have been working on a collaboration. (Blundell Dep. at 67-68, 71-73, 76-77.) On
May 9, 2012, Blundell emailed Rucci:
Are you doing some work with New Balance? I know you've got fingers in
a no. of pies at the moment[.]
The reason I ask is that I[']ve just seen some NEW BALANCE trainers. It[']s
funny how they've come on my radar recently. Need to get fit and thought I'd start
running. The only thing I could see myself running in are [N]ew Balance [or] Nike
so had a look on line. First thing [I] came across were NB Minimus. They look
great and then I notice the <=> logo on them and instantly thought . . . . . [b]et
Christine's got another new gig.
So have you branched out from Denim into a new area of expertise? I know
you've always had a great technical knowledge but never quite saw you doing
footwear, you're such a Denim specialist.
38/
(...continued)
Ex. 1: Rucci Dep. at 213-14, 219-20, 260-61; Del Signore Dep. at 56.
18
If you are collaborating and I'm guessing you are as it[']s your logo plastered
all over the range and your motto of less equals more . . . . . can you get me a
discount. Let me know soon as I need to buy some soonish.
(Benjamin Aff. Ex. 53: 5/9/12 Blundell Email.) New Balance's use of the <=> mark did not cause
Blundell to be confused as to the source of the products, since he was looking specifically at running
sneakers and he understood that Denimafia was predominantly a jeans company that did not produce
footwear. (Defs. Rule 56.1 Stmt. ¶ 82; Blundell Dep. at 72-73, 76-77.)
In approximately May 2012, Barletta was shopping for New Balance running
sneakers on the New Balance website or in a New Balance store when she saw the <=> mark used
in a New Balance sneaker advertisement. (Edelman Aff. Ex. 70: Barletta Dep. at 50-51, 54-55, 6364; Edelman Aff. Ex. 1: Rucci Dep. at 222-23.) When Barletta asked Rucci if Denimafia and New
Balance were collaborating, Rucci responded that there was no collaboration but asked Barletta to
document her inquiry in writing. (Defs. Rule 56.1 Stmt. & Denimafia Counter-Stmt. ¶¶ 83-84;
Rucci Aff. ¶ 64; Edelman Aff. Ex. 1: Rucci Dep. at 222-26, 260-61; Barletta Dep. at 52-53, 62-63.)
On June 15, 2012, Barletta emailed Rucci:
I hope you are really well. It has been a while . . . are you doing a shoe line
now? I saw something with New Balance and got a little confused since I thought
your line was only jeans. Would love to hear all about it and what you have been up
to lately.
(Benjamin Aff. Ex. 54: 6/15/12 Barletta Email.) Barletta speculated that Denimafia and New
Balance could have been working on a collaboration. (Barletta Dep. at 52, 54.)
New Balance's Survey Evidence
New Balance submitted Dr. Joel Steckel's expert report and survey of potential
purchasers of Denimafia's goods, which he designed specifically "to determine whether there was
any consumer confusion as to source, sponsorship, or affiliation between Denimafia and New
19
Balance." (Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶ 127; Dkt. No. 90: Edelman Aff. Ex. 137: Steckel
Aff. Ex. 1: Steckel Expert Report ¶¶ 12, 14, 20.)
Using Denimafia's sale prices and limited channels of distribution, Dr. Steckel
determined that "the set of consumers nationwide who are the likely buyers of Denimafia's jeans"
were online shoppers who purchased denim jeans priced between $100 and $1,000 within the last
twelve months. (Steckel Expert Report ¶¶ 15, 20-22, 33(b).) To qualify for the survey, respondents
had to be eighteen years old or older and had to provide their gender. (Steckel Expert Report ¶
33(b).) Dr. Steckel replicated Denimafia's purchasing environment by conducting an Internet survey
using one image of a pair of Denimafia jeans with a hanging tag that uses the <=> design mark in
very large print displayed prominently in front of the pants. (Defs. Rule 56.1 Stmt. ¶¶ 128-29;
Steckel Expert Report ¶¶ 29-30, 32-33 & Ex. C; Dkt. No. 88: Defs. Br. at 20 n.19.)39/ Dr. Steckel
conducted the survey in "the commonly accepted Eveready format," which asks questions of the
following type: "'Who puts out the product shown here?'; 'Why do you say that?'; and 'What other
products does the company put out?'" (Steckel Expert Report ¶¶ 28, 33(e)-(j); Defs. Rule 56.1 Stmt.
¶ 127.)
Dr. Steckel found zero incidents of reverse confusion and concluded that his survey
supports a finding of no likelihood of (reverse) confusion. (Defs. Rule 56.1 Stmt. ¶¶ 130-33; Steckel
Expert Report ¶¶ 18, 41-42.) Denimafia did not submit a rebuttal expert report. (Defs. Rule 56.1
Stmt. ¶¶ 134-35; Edelman Aff. ¶¶ 9-10; Dkt. No. 106: Rucci Aff. ¶ 77.)40/
39/
"[T]he image in the survey was taken from the only photograph of the actual product with
a hangtag bearing the mark shown on Denimafia's website." (Dkt. No. 115: Defs. Reply Br.
at 7 n.9.)
40/
Denimafia's attacks on New Balance's expert survey are unsupported by any contrary expert
evidence. (See Dkt. No. 108: Denimafia Rule 56.1 Counter-Stmt. ¶¶ 126-28, 131, 133.)
20
Damages
New Balance submitted Dr. Christine Meyer's expert report, which analyzed whether
Denimafia was damaged by New Balance's alleged trademark infringement. (Dkt. No. 90: Edelman
Aff. Ex. 53: Meyer Aff. Ex. 1: Meyer Expert Report; see Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶¶ 13637.) Dr. Meyer found that Denimafia suffered no lost profits and that there was no evidence of any
unjust enrichment on the part of New Balance, and concluded that there was no evidence of actual
harm to Denimafia. (Defs. Rule 56.1 Stmt. ¶ 137; Edelman Aff. Ex. 53: Meyer Aff. Ex. 1: Meyer
Report ¶¶ 8-9, 17, 39.) Denimafia did not submit a rebuttal expert report. (Defs. Rule 56.1 Stmt.
¶¶ 141-42; Edelman Aff. ¶¶ 11-12; Dkt. No. 106: Rucci Aff. ¶ 79.)
ANALYSIS
I.
GOVERNING LEGAL STANDARDS
A.
Summary Judgment Standard
Rule 56 of the Federal Rules of Civil Procedure provides that the "court shall grant
summary judgment if the movant shows that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a); see also, e.g., Celotex
Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247, 106 S. Ct. 2505, 2509-10 (1986); Humphreys v. Cablevision Sys. Corp., No. 124431-cv, --- F. App'x ----, 2014 WL 185010 at *1 (2d Cir. Jan. 17, 2014); Connolly v. Calvanese,
515 F. App'x 62, 62 (2d Cir. 2013); Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 580 (2d Cir.
1991).
The burden of showing that no genuine factual dispute exists rests on the party
seeking summary judgment. See, e.g., Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S. Ct.
1598, 1608 (1970); Alzawahra v. Albany Med. Ctr., No. 12-4517, --- F. App'x ----, 2013 WL
21
6284286 at *1 (2d Cir. Dec. 5, 2013); Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 36 (2d Cir.
1994); Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir. 1994). The
movant may discharge this burden by demonstrating to the Court that there is an absence of evidence
to support the non-moving party's case on an issue on which the non-movant has the burden of
proof. See, e.g., Celotex Corp. v. Catrett, 477 U.S. at 323, 106 S. Ct. at 2552-53; Dolan v. Cassella,
No. 12-2486, --- F. App'x ----, 2013 WL 6150763 at *1 (2d Cir. Nov. 22, 2013).
To defeat a summary judgment motion, the non-moving party "'must do more than
simply show that there is some metaphysical doubt as to the material facts.'" Scott v. Harris, 550
U.S. 372, 380, 127 S. Ct. 1769, 1776 (2007) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 1356 (1986)). Instead, the non-moving party must "cit[e]
to particular parts of materials in the record" to show that "a fact . . . is genuinely disputed." Fed.
R. Civ. P. 56(c)(1); see, e.g., Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. at 587,
106 S. Ct. at 1356; Alzawahra v. Albany Med. Ctr., 2013 WL 6284286 at *1; Weinstock v.
Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000) (at summary judgment, "[t]he time has come . . .
'to put up or shut up'"), cert. denied, 540 U.S. 811, 124 S. Ct. 53 (2003).
In evaluating the record to determine whether there is a genuine issue as to any
material fact, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are
to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. at 255, 106 S. Ct. at 2513.41/
The Court draws all inferences in favor of the non-moving party only after determining that such
inferences are reasonable, considering all the evidence presented. See, e.g., Apex Oil Co. v.
41/
See also, e.g., Crown Castle NG E. Inc. v. Town of Greenburgh, N.Y., No. 13-2921-cv, --F. App'x ----, 2014 WL 185012 at *2 (2d Cir. Jan. 17, 2014); Alzawahra v. Albany Med.
Ctr., 2013 WL 6284286 at *1; Feingold v. New York, 366 F.3d 138, 148 (2d Cir. 2004);
Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 36; Gallo v. Prudential Residential Servs.,
Ltd. P'ship, 22 F.3d at 1223.
22
DiMauro, 822 F.2d 246, 252 (2d Cir.), cert. denied, 484 U.S. 977, 108 S. Ct. 489 (1987). "If, as to
the issue on which summary judgment is sought, there is any evidence in the record from any source
from which a reasonable inference could be drawn in favor of the nonmoving party, summary
judgment is improper." Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 37.
In considering a motion for summary judgment, the Court is not to resolve contested
issues of fact, but rather is to determine whether there exists any disputed issue of material fact. See,
e.g., Donahue v. Windsor Locks Bd. of Fire Comm'rs, 834 F.2d 54, 58 (2d Cir. 1987); Knight v.
U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986), cert. denied, 480 U.S. 932, 107 S. Ct. 1570 (1987).
To evaluate a fact's materiality, the substantive law determines which facts are critical and which
facts are irrelevant. See, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S. Ct. at 2510.
While "disputes over facts that might affect the outcome of the suit under the governing law will
properly preclude the entry of summary judgment[,] [f]actual disputes that are irrelevant or
unnecessary will not be counted." Id. at 248, 106 S. Ct. at 2510 (citations omitted); see also, e.g.,
Knight v. U.S. Fire Ins. Co., 804 F.2d at 11-12.
When there are cross-motions for summary judgment:
The same standard applies where, as here, the parties filed cross-motions for
summary judgment . . . . Moreover, even when both parties move for summary
judgment, asserting the absence of any genuine issues of material fact, a court need
not enter judgment for either party. Rather, each party's motion must be examined
on its own merits, and in each case all reasonable inferences must be drawn against
the party whose motion is under consideration.
Morales v. Quintel Entm't, Inc., 249 F.3d 115, 121 (2d Cir. 2001) (citation omitted).42/
42/
Accord, e.g., Parent v. New York, 485 F. App'x 500, 503 (2d Cir.), cert. denied, 133 S. Ct.
652 (2012); Chandok v. Klessig, 632 F.3d 803, 812 (2d Cir. 2011); Law Debenture Trust Co.
v. Maverick Tube Corp., 595 F.3d 458, 468 (2d Cir. 2010); Bronx Household of Faith v. Bd.
of Educ. of N.Y., 492 F.3d 89, 96 (2d Cir. 2007); Barhold v. Rodriguez, 863 F.2d 233, 236
(2d Cir. 1988); Eastman Mach. Co. v. United States, 841 F.2d 469, 473-74 (2d Cir. 1988);
(continued...)
23
B.
Applicable Trademark Law Standards
"'A claim of trademark infringement is analyzed under a familiar two-prong test. The
test looks first to whether the plaintiff's mark is entitled to protection, and second to whether the
defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship
of the defendant's goods.'" Aceto Agric. Chems. Corp. v. Bayer Aktiengesellschaft, 531 F. App'x
103, 103-04 (2d Cir. 2013); see, e.g., Louis Vuitton Malletier S.A. v. LY USA, Inc., 472 F. App'x
19, 21 (2d Cir. 2012); Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 383 (2d Cir. 2005), cert.
denied, 547 U.S. 1019, 126 S. Ct. 1570 (2006).
"[T]he Lanham Act protects marks from two kinds of confusion. It protects against
direct confusion, where there is a likelihood that consumers will 'believe that the trademark owner
sponsors or endorses the use of the challenged mark.' It also protects against so-called 'reverse
confusion,' where the consumer will believe 'that the junior user is the source of the senior user's
goods.'" Kelly-Brown v. Winfrey, 717 F.3d 295, 304 (2d Cir. 2013) (citation omitted).43/ "In reverse
confusion cases, consumers may believe that the senior user is 'an unauthorized infringer, and the
42/
(...continued)
Charron v. Sallyport Global Holdings, Inc., 12 Civ. 6837, 2014 WL 464649 at *2 (S.D.N.Y.
Feb. 3, 2014); BMC–The Benchmark Mgmt. Co. v. V3 231, LLC, 12 Civ. 7921, 2013 WL
5420982 at *4 (S.D.N.Y. Sept. 27, 2013); Bodur v. Palisades Collection, LLC, 829 F. Supp.
2d 246, 250-51 (S.D.N.Y. 2011) (Peck, M.J.); Aristocrat Leisure Ltd. v. Deutsche Bank
Trust Co. Ams., 618 F. Supp. 2d 280, 291 (S.D.N.Y. 2009); Alfano v. CIGNA Life Ins. Co.,
07 Civ. 9661, 2009 WL 222351 at *13 (S.D.N.Y. Jan. 30, 2009) (Lynch, D.J.); Revlon
Consumer Prods. Corp. v. Estee Lauder Cos., 00 Civ. 5960, 2003 WL 21751833 at *7
(S.D.N.Y. July 30, 2003) (Peck, M.J.).
43/
See, e.g., Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490-91 (2d Cir. 1988)
(holding that "reverse confusion . . . is actionable under § 43(a) of the Lanham Act"); 4 J.
Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:10 (4th ed. 2013)
("The Second Circuit has unequivocally held that reverse confusion is actionable under
Lanham Act § 43(a) for infringement of unregistered marks.").
24
[junior user's] use of the mark may in that way injure [the senior user's] reputation and impair its
good will.'" Kelly-Brown v. Winfrey, 717 F.3d at 304-05.44/
In determining whether there is a likelihood of confusion, courts apply the eightfactor balancing test set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.),
cert. denied, 368 U.S. 820, 82 S. Ct. 36 (1961).45/
"The eight factors are: (1) strength of the trademark; (2) similarity of the marks; (3)
proximity of the products and their competitiveness with one another; (4) evidence
that the senior user may 'bridge the gap' by developing a product for sale in the
market of the alleged infringer's product; (5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith; (7) respective quality
of the products; and (8) sophistication of consumers in the relevant market."
Kelly-Brown v. Winfrey, 717 F.3d at 307; accord, e.g., Starbucks Corp. v. Wolfe's Borough Coffee,
Inc., 588 F.3d at 115; Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 384. "The application of the
Polaroid test is not mechanical, but rather, focuses on the ultimate question of whether, looking at
the products in their totality, consumers are likely to be confused." Kelly-Brown v. Winfrey, 717
44/
See, e.g., Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 388 n.3 ("A 'reverse confusion'
situation exists where the junior user is able to amass such trademark strength in its imitative
mark that the senior user's products become associated with the junior user in the minds of
consumers."); Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 583 (2d Cir. 1991); 4 J. Thomas
McCarthy, McCarthy on Trademarks & Unfair Competition § 23:10.
45/
See, e.g., Kelly-Brown v. Winfrey, 717 F.3d at 307; Louis Vuitton Malletier S.A. v. LY
USA, Inc., 472 F. App'x at 21; Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d
97, 115 (2d Cir. 2009); Rush Indus., Inc. v. Garnier LLC, 309 F. App'x 431, 433 (2d Cir.
2009); Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 384.
25
F.3d at 307 (quotations omitted).46/ The fact-specific nature of this inquiry does not preclude
summary judgment in appropriate cases.47/
II.
NEW BALANCE'S MOTION FOR SUMMARY JUDGMENT IS GRANTED AND
DENIMAFIA'S MOTION IS DENIED
A.
Strength of the Trademark
"In assessing the strength of a mark, courts focus 'on the distinctiveness of the mark,
or more precisely, its tendency to identify the goods sold under the marks as emanating from a
particular, although possibly anonymous source.' This inquiry encompasses two elements: (1) the
degree to which the mark is inherently distinctive; and (2) the degree to which it has acquired
distinctiveness in the marketplace," sometimes referred to as commercial distinctiveness or
secondary meaning. J.T. Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *15
(S.D.N.Y. May 8, 2013) (citation omitted).48/
46/
See, e.g., Louis Vuitton Malletier S.A. v. LY USA, Inc., 472 F. App'x at 21; Starbucks Corp.
v. Wolfe's Borough Coffee, Inc., 588 F.3d at 115; Star Indus., Inc. v. Bacardi & Co., 412
F.3d at 384; Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 119 (2d Cir.
2001).
47/
See, e.g., Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d at 121; 4 J. Thomas
McCarthy, McCarthy on Trademarks & Unfair Competition § 23:67 ("The factual nature of
the issue of likelihood of confusion does not prevent a trial court, in an appropriate case,
from finding on a motion for summary judgment that [] there is no need for a trial because
there is no triable issue of fact on the crucial issue of likelihood of confusion. That is, the
trial judge may find that the evidence overwhelmingly supports either a lack of likely
confusion or overwhelmingly supports a finding of a likelihood of confusion." (fn. omitted)).
48/
See, e.g., O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 520 (S.D.N.Y.
2008) ("A mark's strength has two components: its inherent distinctiveness and the
distinctiveness it has acquired in the marketplace."); see also, e.g., Star Indus., Inc. v.
Bacardi & Co., 412 F.3d 373, 384 (2d Cir. 2005), cert. denied, 547 U.S. 1019, 126 S. Ct.
1570 (2006); YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x 392, 394 (2d
Cir. 2003).
26
"Inherent distinctiveness is traditionally determined by placing a mark within one of
the following categories, arranged from weakest to strongest: generic, descriptive, suggestive, or
arbitrary or fanciful." O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d at 520 (fn.
omitted); accord, e.g., Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 384-85. "This hierarchy is
imposed because the more descriptive—rather than arbitrary—a mark is, the more likely it is that
consumers will assume similar marks were chosen because they describe similar products, not
because the products come from the same source." First Nat'l Bank of Omaha, Inc. v. Mastercard
Int'l Inc., 02 Civ. 3691, 03 Civ. 707, 2004 WL 1575396 at *7 (S.D.N.Y. July 15, 2004); see, e.g.,
O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d at 520 ("[C]onsumers confronted
with products sold under similar descriptive marks are not likely to infer that the products are from
the same source because vendors are apt to use similar terms to describe similar products.").
Generic marks, which "are those consisting of words identifying the relevant category
of goods or services," have no inherent distinctiveness and are not protectable. Star Indus., Inc. v.
Bacardi & Co., 412 F.3d at 385; see, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *6.
"Descriptive marks are those consisting of words identifying qualities of the product." Star Indus.,
Inc. v. Bacardi & Co., 412 F.3d at 385. Descriptive marks are inherently weak, but may be strong
overall "provided they have acquired secondary meaning.'" Star Indus., Inc. v. Bacardi & Co., 412
F.3d at 385; see, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *6, *15. "Suggestive
marks are those that are not directly descriptive, but do suggest a quality or qualities of the product,
through the use of 'imagination, thought and perception.'" Star Indus., Inc. v. Bacardi & Co., 412
F.3d at 385 (citation omitted).49/ Suggestive marks are inherently distinctinctive, but may be weak
49/
See, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *6 ("'A term is suggestive
if it requires imagination, thought and perception to reach a conclusion as to the nature of
(continued...)
27
overall in the absence of acquired distinctiveness. Star Indus., Inc. v. Bacardi & Co., 412 F.3d at
385.50/ Arbitrary or fanciful marks, which "are ones that do not communicate any information about
the product either directly or by suggestion," are inherently very distinctive. Star Indus., Inc. v.
Bacardi & Co., 412 F.3d at 385; see, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *7.
In assessing whether a mark has acquired distinctiveness in the marketplace, "a court
considers whether the primary significance of the mark to the consuming public is to 'identify the
source of the product rather than the product itself.'" J.T. Colby & Co. v. Apple Inc., 2013 WL
1903883 at *7; see, e.g., Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d at 123.51/
"Factors that are relevant to a secondary meaning determination include '(1) advertising
expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of
the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of
49/
(...continued)
the goods.'").
50/
See also, e.g., Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 123 (2d Cir.
2001) ("Even an inherently distinctive mark can, in its commercial context, lack strength as
a mark."); J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *15 ("Even if the plaintiffs'
mark were classified as suggestive, the lack of evidence of secondary meaning would still
indicate that plaintiffs' mark is relatively weak."); Sunenblick v. Harrell, 895 F. Supp. 616,
626 (S.D.N.Y. 1995) ("[T]he classification of a mark as suggestive is not necessarily
dispositive on the issue of its strength, which must finally be determined in reference to its
commercial context. Put another way, a mark may be conceptually strong and yet
commercially weak if the mark lacks the requisite 'origin-indicating' quality in the eyes of
consumers." (citation omitted)), aff'd, 101 F.3d 684 (2d Cir.), cert. denied, 519 U.S. 964, 117
S. Ct. 386 (1996).
51/
See also, e.g., W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 572-73 (2d Cir. 1993) ("In
evaluating a mark's strength, a court is permitted to consider the mark's secondary meaning,
that is, the extent to which the public has come to identify the mark with a particular
product."); O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d at 520 ("Acquired
distinctiveness is a measure of 'the extent to which the public has come to identify the mark
with a particular product.'"); Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481,
488 (S.D.N.Y. 2004) ("Distinctiveness in the marketplace turns on the recognition of the
plaintiffs' mark in the relevant marketplace.").
28
the mark's use.'" J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *7; see, e.g., Medici Classics
Prods., LLC v. Medici Grp., LLC, 683 F. Supp. 2d 304, 310 (S.D.N.Y. 2010); First Nat'l Bank of
Omaha, Inc. v. Mastercard Int'l Inc., 2004 WL 1575396 at *8.
1.
Denimafia's Mark is Weak
Assuming arguendo that Denimafia's <=> mark should be classified as suggestive,
and thus considered inherently distinctive,52/ Denimafia fails to present sufficient evidence of
secondary meaning from which a reasonable juror could conclude that the <=> mark is strong.
Denimafia admits that it "has never had the funds for traditional advertising such as
television commercials and print advertising in magazines and newspapers," and merely offers
evidence of its use of free advertising, including that it "spray painted the 5EP LOGO on the
pavement of hundreds of street corners in New York City." (Dkt. No. 106: Rucci Aff. ¶¶ 24-25;
Denimafia Opp. Br. at 7; see page 12 above.) Advertising of this nature does not support a finding
of acquired distinctiveness in the marketplace. See, e.g., Nora Beverages, Inc. v. Perrier Grp. of
Am., Inc., 269 F.3d 114, 123 (2d Cir. 2001) ("In light of [plaintiff's] . . . small advertising budget
52/
Denimafia's mark is not entitled to a presumption of distinctiveness on the basis that it is a
registered trademark. (See Dkt. No. 103: Denimafia Opp. Br. at 5-6.) The presumption of
distinctiveness extends only to the goods listed in the registration, and Denimafia amended
its registration to exclude shoes, the principal product on which New Balance uses the <=>
design. (See page 6 above.) Accordingly, Denimafia's registration does not, in itself, give
rise to a presumption that the mark is always distinctive for all uses. See, e.g., Savin Corp.
v. Savin Grp., 391 F.3d 439, 457 (2d Cir. 2004) ("[A]n incontestible registered trademark
enjoys a conclusive presumption of distinctiveness. Yet even if a mark is registered and,
thus, afforded the utmost degree of protection, the presumption of an exclusive right to use
the mark extends only so far as the goods or services noted in the registration certificate."
(citations omitted)), cert. denied, 546 U.S. 822, 126 S. Ct. 116 (2005); Paco Sport, Ltd. v.
Paco Rabanne Parfums, 86 F. Supp. 2d 305, 312 (S.D.N.Y.) (Counterclaim-plaintiff's "only
registration of the mark . . . is for use on fragrances and various cosmetics products. This
registration, therefore, cannot create the presumption that the trademark . . . is distinctive
when used on clothing." (record citation omitted)), aff'd, No. 00-7344, 234 F.3d 1262 (table),
2000 WL 1721126 (2d Cir. Nov. 16, 2000).
29
relative to market competitors at the relevant time, we agree with the district court that [plaintiff]
possessed a weak mark."); Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 489
(S.D.N.Y. 2004) ("Plaintiffs have set up a website to promote their works, but, again, plaintiffs fail
to show the expense associated with that promotional vehicle. There can be little doubt, however,
with gross sales of $15,000 over a 5-year period, that plaintiffs' advertising budget is relatively
small." (citation omitted)); First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 02 Civ. 3691,
03 Civ. 707, 2004 WL 1575396 at *8 (S.D.N.Y. July 15, 2004).
Isolated incidents of Denimafia's unsolicited media coverage in several industryspecific publications (Rucci Aff. ¶¶ 32-33) likewise are insufficient to show secondary meaning.
See, e.g., Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d at 490 ("Plaintiffs have also
been unable to assert that the length of use of their mark and the unsolicited media coverage
surrounding [their mark] have generated a secondary meaning. The five-year use of the mark alone
is not probative of [the mark's] secondary meaning, nor are the dozen or so unsolicited articles that
praise" plaintiffs' product.); Sunenblick v. Harrell, 895 F. Supp. 616, 627 (S.D.N.Y. 1995)
("Although his products have been played on some radio stations, and have received favorable
reviews in certain publications, defendants correctly point out that releases under [plaintiff's] label
have been few and far between, thereby leading the court to question whether such exposure as the
[plaintiff's] label has received could generate any strength in the mark."), aff'd, 101 F.3d 684 (2d
Cir.), cert. denied, 519 U.S. 964, 117 S. Ct. 386 (1996).
Additionally, Denimafia's relatively unsuccessful sales figures (see pages 14-15
above) do not support a finding of acquired distinctiveness. See, e.g., YouGottaEat, Inc. v. Checkers
Drive-In Rests., Inc., 81 F. App'x 392, 394 (2d Cir. 2003); Nora Beverages, Inc. v. Perrier Grp. of
Am., Inc., 269 F.3d at 123 ("In light of [plaintiff's] . . . low level of commercial success . . . , we
30
agree with the district court that [plaintiff] possessed a weak mark."); W.W.W. Pharm. Co. v.
Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) (Plaintiff "has had only very modest sales since it
entered the business in 1982 and suffered from a severe drop in sales due to supplier problems in
1985-1986. This evidence indicates a low national recognition of [plaintiff's] product."); Strange
Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d at 489 ("[G]rossing $15,000 over five years and
the sale of 1,310 CDs does not amount to 'success' within the confines of the secondary meaning
test.").
Denimafia's failure to submit consumer studies also weighs against a finding of
secondary meaning. See, e.g., Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d at 489
("Plaintiffs have not put forth any consumer studies to demonstrate that [their mark] is linked to
[plaintiffs] in the minds of consumers."); First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc.,
2004 WL 1575396 at *8; Sunenblick v. Harrell, 895 F. Supp. at 627.
Finally, the breadth of evidence rebutting Denimafia's assertions of exclusivity (see
page 7 above), and the absence of any evidence suggesting the third-party uses are linked to
Denimafia's mark such that they could support a plagiarism assertion, weigh against a finding of
acquired distinctiveness in the marketplace. See, e.g., W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d
at 573 ("[E]xtensive third party use of the words sport and stick 'weighs against a finding that
[plaintiff's] trade name is strong.'"); Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d at
489 ("Both plaintiffs and defendants have put forth ample documentation of the use of the term [in
their mark] to describe different types of music appearing on the Internet. However, there is no link
between these uses and plaintiffs' mark." (record citations omitted)); First Nat'l Bank of Omaha, Inc.
v. Mastercard Int'l Inc., 2004 WL 1575396 at *8.
31
Accordingly, even assuming arguendo that Denimafia's mark is suggestive, the
evidence is insufficient to establish a sufficient level of distinctiveness in the marketplace from
which a reasonable juror could conclude that Denimafia's mark is strong. See, e.g., Medici Classics
Prods., LLC v. Medici Grp., LLC, 683 F. Supp. 2d 304, 310 (S.D.N.Y. 2010) ("Plaintiff's mark . . .
is suggestive . . . . The Second Circuit explicitly rejected the argument that a suggestive mark is
'strong without evidence of secondary meaning' . . . . There is no evidence in the record that
plaintiff's mark has acquired distinctiveness, and accordingly the Court concludes that the mark is
weak."); First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 2004 WL 1575396 at *8 ("Though
suggestive, there is no evidence that [the mark] has yet acquired any significant level of
distinctiveness in the consumer marketplace or that it is likely to become associated in consumers'
minds with a particular [product] source."); Sunenblick v. Harrell, 895 F. Supp. at 627 (plaintiff's
suggestive mark "is a very weak one").53/
2.
The Weakness of the Mark Weighs Against Denimafia
In some cases, where a plaintiff alleges reverse confusion, "it is appropriate to
consider the strength of the junior user's mark, because the essence of such a claim is that the junior
user overpowers the senior user's mark." Gameologist Grp., LLC v. Scientific Games Int'l, Inc., 838
F. Supp. 2d 141, 160 n.8 (S.D.N.Y. 2011), aff'd, 508 F. App'x 31 (2d Cir. 2013).54/ Here, there is
53/
See also, e.g., SLY Magazine, LLC v. Weider Publ'ns L.L.C., 529 F. Supp. 2d 425, 438
(S.D.N.Y. 2007) ("[W]hile plaintiff's mark is arbitrary because of its inherent distinctiveness,
the lack of evidence that there is widespread commercial recognition of the plaintiff's mark
demonstrates that the [plaintiff's] mark is a weak mark."), aff'd, 346 F. App'x 721 (2d Cir.
2009).
54/
See, e.g., J.T. Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *15 (S.D.N.Y.
May 8, 2013); THOIP v. Walt Disney Co., 788 F. Supp. 2d 168, 185 & n.101 (S.D.N.Y.
2011) (collecting cases); Birmingham v. Mizuno USA, Inc., No. 09-CV-0566, 2011 WL
1299356 at *17 n.20 (N.D.N.Y. Mar. 31, 2011); Strange Music, Inc. v. Strange Music, Inc.,
(continued...)
32
no evidence that New Balance's <=> mark is conceptually or inherently stronger than Denimafia's
mark. (See pages 9-10 above.)55/
Moreover, while in some circumstances the commercial weakness of a mark will
weigh in favor of a reverse confusion finding,56/ that is not the case where, as here, there is no
evidence of any negative correlation between New Balance's use of the <=> design and Denimafia's
lack of success. (Dkt. No. 90: Edelman Aff. Ex. 53: Meyer Aff. Ex. 1: Meyer Report ¶ 22; see pages
11, 14-15 above.) See, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *16 ("The
plaintiffs' sales plummeted in 2006, four years before [defendant] announced the [similar] mark in
2010. . . . As a result, there is no evidence that the commercial weakness of plaintiffs' mark has been
influenced by the defendant's use of the mark . . . . Moreover, commercial weakness is in some ways
a doubleedged sword. On the one hand, a commercially weak mark is more vulnerable to reverse
confusion. On the other hand, part of what entitles a mark to protection is its ability to serve as an
indicator of origin. Accordingly, to the extent a senior user has invested so little in its mark that it
has failed to create an association in the minds of consumers between the mark and a source, there
is correspondingly less reason to protect the mark. After all, '[t]he chief danger inherent in
54/
(...continued)
326 F. Supp. 2d 481, 488 (S.D.N.Y. 2004) ("In a reverse confusion case the court should
look to the strength of the junior user's mark 'because the doctrine of reverse confusion
properly should focus, not on the senior user's mark, but that of the intervening junior
user.'"); Sunenblick v. Harrell, 895 F. Supp. 616, 628 (S.D.N.Y. 1995), aff'd, 101 F.3d 684
(2d Cir.), cert. denied, 519 U.S. 964, 117 S. Ct. 386 (1996); 4 J. Thomas McCarthy,
McCarthy on Trademarks & Unfair Competition § 23:10 (4th ed. 2013) ("[T]he court should
evaluate the strength of the junior user's mark so as to gauge its ability to overpower the
senior user's mark.").
55/
See also, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *16 ("The defendant's
. . . mark has no more conceptual or inherent strength than the plaintiffs' . . . mark.").
56/
See, e.g., THOIP v. Walt Disney Co., 788 F. Supp. 2d at 186; O'Keefe v. Ogilvy & Mather
Worldwide, Inc., 590 F. Supp. 2d 500, 521 (S.D.N.Y. 2008).
33
recognizing reverse confusion claims is that innovative junior users, who have invested heavily in
promoting a particular mark, will suddenly find their use of the mark blocked by plaintiffs who have
not invested in, or promoted, their own marks.'").57/
Accordingly, the weakness of Denimafia's mark does not make consumer confusion
more likely. This factor weighs in New Balance's favor.58/
B.
Similarity of the Marks
"'In assessing similarity, courts look to the overall impression created by the logos
and the context in which they are found and consider the totality of factors that could cause
confusion among prospective purchasers.'" Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 386
(2d Cir. 2005), cert. denied, 547 U.S. 1019, 126 S. Ct. 1570 (2006).59/ The mere fact that two marks
are "highly similar" will not weigh in favor of a likelihood of confusion where "they are presented
57/
Cf., e.g., SLY Magazine, LLC v. Weider Publ'ns L.L.C., 529 F. Supp. 2d 425, 438 (S.D.N.Y.
2007) ("[T]he essence of plaintiff's reverse confusion claim is that the junior user . . .
overpowers the senior user's mark. Were I to consider the strength of defendants' (the junior
users') mark, as courts sometimes do when reverse confusion is alleged, this factor would
still weigh in defendants' favor."), aff'd, 346 F. App'x 721 (2d Cir. 2009).
58/
Even if the Court were to weigh the weakness of the mark in Denimafia's favor, in view of
the findings on the remaining factors, that would not change the overall outcome. See, e.g.,
Gameologist Grp., LLC v. Scientific Games Int'l, Inc., 838 F. Supp. 2d at 160 n.8 ("The
parties agree that the defendants' mark is a strong one. Thus, if it were necessary to evaluate
the strength of the junior user's mark in this case, the first factor in the Polaroid analysis
would weigh in the plaintiff's favor. However, that would not change the Court's ultimate
conclusion on likelihood of consumer confusion after balancing all of the Polaroid factors.");
O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d at 526.
59/
See, e.g., Savin Corp. v. Savin Grp., 391 F.3d 439, 458 (2d Cir. 2004) ("'[T]he setting in
which a designation is used affects its appearance and colors the impression conveyed by
it.'"), cert. denied, 546 U.S. 822, 126 S. Ct. 116 (2005); W.W.W. Pharm. Co. v. Gillette Co.,
984 F.2d 567, 573 (2d Cir. 1993) ("Under this prong of the inquiry, we consider whether the
similarity of the marks is likely to provoke confusion among potential customers. We must
therefore look at the general impression created by the marks, keeping in mind all factors
which the buying public will likely perceive and remember." (citation omitted)); J.T. Colby
& Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *16 (S.D.N.Y. May 8, 2013).
34
in different ways." YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x 392, 394 (2d
Cir. 2003).60/
It is undisputed that both marks use an equal symbol flanked by less-than and greaterthan symbols. (See pages 8-10 above.) New Balance, however, argues that any similarity between
the marks is unlikely to cause confusion because both New Balance and Denimafia use the symbols
in conjunction with their respective house marks. (Dkt. No. 88: Defs. Br. at 14-15; Dkt. No. 115:
Defs. Reply Br. at 3.) The Court agrees.61/
Denimafia usually uses the <=> mark in conjunction with its "5EP" and "Denimafia"
brand house marks, and New Balance always uses the <=> mark in conjunction with its "New
Balance," "NB," "N" and "MINIMUS" brand house marks (see pages 8-10 above), which makes
confusion unlikely. See, e.g., Lapine v. Seinfeld, 375 F. App'x 81, 84 (2d Cir. 2010) ("[D]efendants'
use of the famous [brand] name reduces any likelihood of confusion regarding the marks."); O'Keefe
v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d at 522 ("The Second Circuit has 'repeatedly
60/
See, e.g., Savin Corp. v. Savin Grp., 391 F.3d at 458 ("[E]ven close similarity between two
marks is not dispositive of the issue of likelihood of confusion. Rather, the crux of the issue
is whether the similarity is likely to cause confusion among numerous customers who are
ordinarily prudent. Thus, an inquiry into the degree of similarity between two marks does
not end with a comparison of the marks themselves." (citations & quotations omitted)); J.T.
Colby & Co. v. Apple Inc., 2013 WL 1903883 at *16 ("The fact that the marks use the same
word is not dispositive if the differences in the ways the marks are presented in the
marketplace make confusion less likely."); O'Keefe v. Ogilvy & Mather Worldwide, Inc.,
590 F. Supp. 2d 500, 521 (S.D.N.Y. 2008) ("Although a side-by-side comparison of the two
marks is 'a useful heuristic means of investigating similarities and differences,' it is error to
overemphasize this approach. Rather, a court must analyze how the marks are viewed in the
context of the marketplace, maintaining focus on the ultimate issue of the likelihood of
consumer confusion." (citation omitted)).
61/
New Balance also argues that the marks are dissimilar because New Balance's mark "uses
straight lines, solid printing, and a more elongated representation," whereas Denimafia's
mark uses "distinct printing that makes the symbols appear to be a stamp" and is further
distinguishable by "the curves of the arms in the greater and less than symbols." (Defs. Br.
at 13; Defs. Reply Br. at 3; see pages 8-10 above.) The Court does not agree.
35
found that the presence of a distinct brand name . . . weigh[s] against a finding of confusing
similarity.'").62/
Denimafia does not dispute that the <=> mark is used by both parties in conjunction
with their respective house marks, but instead argues that "under a reverse confusion theory, the
Second Circuit has found that the use of a house mark together with the confusingly similar mark
could 'simply increase the misappropriation by linking the defendant's own name to the plaintiff's
good will established by its trademark.'" (Dkt. No. 103: Denimafia Opp. Br. at 9.) In some
circumstances the use of house brand marks may exacerbate reverse confusion,63/ but that is not a
blanket rule for all cases of reverse confusion.64/ Rather, the use of brand house marks is considered
in the context of the specific facts to evaluate the marks' similarity, which is one factor among the
62/
Accord, e.g., W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d at 573 ("[W]hen a similar mark
is used in conjunction with a company name, the likelihood of confusion may be lessened.");
Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968-69 (2d Cir. 1981); First Nat'l Bank of
Omaha, Inc. v. Mastercard Int'l Inc., 02 Civ. 3691, 03 Civ. 707, 2004 WL 1575396 at *9
(S.D.N.Y. July 15, 2004) ("The prominent use of a brand name alongside a trademark can
serve to dispell confusion as to the source of a product."); see also cases cited at pages 36-37
& n.65 below.
63/
See, e.g., THOIP v. Walt Disney Co., 788 F. Supp. 2d 168, 186 & n.108 (S.D.N.Y. 2011);
4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:10 (4th ed.
2013) ("Some decisions have held that the junior user's use of a house mark along with the
mark in issue, could aggravate, not lessen, the likelihood of reverse confusion. The junior
user's use of a well-known national house mark along with the smaller senior user's mark
could strengthen a viewer's link of the mark with the senior user." (fn. omitted)).
64/
See, e.g., Kate Spade LLC v. Saturdays Surf LLC, 950 F. Supp. 2d 639, 645 (S.D.N.Y.
2013) ("Saturdays Surf NYC argues, however, that the Kate Spade name's fame will actually
lead consumers to believe that Saturdays Surf NYC has been licensed by Kate Spade to use
its mark or that Saturdays Surf NYC is an infringer. This is consistent with Saturdays Surf
NYC's argument that this is a 'reverse confusion' case. However, the problem with this
argument is that the Kate Spade name is very much entrenched in the fashion marketplace
as associated with women's apparel and goods, not men's. It is unlikely that consumers
would believe Kate Spade Saturday, which bears the mark of a fashion house famous for
women's products, would license to or collaborate with a men's clothing company." (citation
omitted)); see also cases cited at pages 36-37 & n.65 below.
36
"'totality of factors'" and "contextual clues" relevant to determining whether the marks' overall
impression will cause confusion about the products' sources. Star Indus., Inc. v. Bacardi & Co., 412
F.3d at 386; J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *16.
Here, both Denimafia and New Balance present the <=> symbol in ways that
communicate brand messages, as opposed to source indicators, i.e., their brand house marks usually
appear larger and more prominently than the <=> mark, and often with other brand message
information such as product imagery and phraseology. (See Defs. Br. at 14; Dkt. No. 89: Defs. Rule
56.1 Stmt. ¶¶ 113-14; see also pages 8-10 above.) See, e.g., Starbucks Corp. v. Wolfe's Borough
Coffee, Inc., 588 F.3d 97, 106-07, 116 (2d Cir. 2009) (marks are "minimally similar" where
defendant's products are presented "in packaging that displays the [defendant's brand] name in no
subtle manner" and are often "accompanied by [defendant's brand's] domain name . . . and other
products"); YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x at 394-95 ("Although
[plaintiff's] mark and the Slogan are highly similar, they are presented in different ways. The Slogan
is used in conjunction with the brand name [of defendant's companies], and with their corresponding
logo design (checkered tablecloth). [Plaintiff's] mark is presented with the logo of a man wearing
a sandwich-board placard. Although in some circumstances graphic differences are irrelevant, in
this case [plaintiff] operates a website, which necessarily relies on its visual displays. Thus, because
the visual differences between [plaintiff's] and Checkers' marks are significant, this factor is
neutral." (citation omitted)); Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 386 (Defendant's "label
displays the Bacardi 'O' design alone against a clear background, whereas [plaintiff's] label displays
the Star 'O' alongside a number of other elements and against a white background. Furthermore,
each label prominently displays the brand logo . . . . In light of these differences, it cannot be said
37
that the similarity factor clearly favors [plaintiff], and the district court's finding that it favored
[defendant] was not clear error.").65/
Accordingly, because both parties used the <=> mark in combination with their brand
names, the similarity of the marks factor weighs in New Balance's favor.
65/
See also, e.g., W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d at 573 ("Although the marks
are composed of the same words and sound the same when uttered, several factors
distinguish them. First, [plaintiff's] mark appears as one word and is the only identifier of
the product. On [defendant's] product, however, the words 'sport' and 'stick' are preceded
in larger letters by the well-known brand name 'Right Guard.' Actors on [defendant's]
television commercials also say the words 'Right Guard' before 'sport stick.' . . . The words
'sport' and 'stick' are about one-third the size of the Right Guard logo and the same size as
the word 'deodorant' or 'deodorant anti-perspirant.' The district court found that the
diminutive size of the words 'sport' and 'stick' was true for most of [defendant's] advertising.
In addition, [defendant's] 'sport' and 'stick' are separated by a running figure. The dissimilar
modes of presentation make confusion less likely. The products themselves are used for
different purposes, lessening the chance that consumers will believe [plaintiff's] product
originated with" defendant.); Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 581-82 (2d Cir.
1991); J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *17 ("The context in which the
two marks appear is also quite different. Plaintiffs' mark appears on both their physical
books and ebooks. In many, if not all cases, the plaintiffs' mark is in close proximity to
contextual information indicating that it is associated with a publisher. . . . The Apple iBooks
mark, on the other hand, appears in an Apple-branded environment—either preinstalled on
Apple devices or on the Apple online App Store."); O'Keefe v. Ogilvy & Mather Worldwide,
Inc., 590 F. Supp. 2d at 521-22 ("[I]t is undisputed that the [defendant's] mark consistently
appeared in immediate conjunction with the familiar American Express 'blue box' logo. . . .
Given that the well known American Express brand name and logo was consistently
presented alongside the . . . mark . . . , the marks cannot be deemed confusingly similar.");
First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 2004 WL 1575396 at *9 ("These
brands and logos are the predominant marks on both [products] and . . . are the most likely
to be recognized as the source of the [product] at issue. . . . It is far less likely that the . . .
[subject] marks will be viewed by consumers as designating the source—rather than the
nature—of the . . . product. In the totality of circumstances in which consumers are
presented with the . . . marks, there is an insufficient basis to find that their similarity is
likely to cause confusion as to the source of the [product] on which they appear."); Strange
Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 491 (S.D.N.Y. 2004) (Defendants'
"mark is almost always accompanied by the bat and snake logo. This logo, as it appears on
defendants' CDs, in most instances, dwarfs the 'strange music' moniker that appears beneath
it. . . . The marks do not create the same overall impression and their appearance in the
marketplace is unlikely to confuse consumers." (citation omitted)).
38
C.
Competitive Proximity
"'This factor focuses on whether the two products compete with each other.'" Savin
Corp. v. Savin Grp., 391 F.3d 439, 458 (2d Cir. 2004), cert. denied, 546 U.S. 822, 126 S. Ct. 116
(2005).66/ "In assessing this factor, 'the court may consider whether the products differ in content,
geographic distribution, market position, and audience appeal.'" Savin Corp. v. Savin Grp., 391 F.3d
at 458.67/ "'When the two users of a mark are operating in completely different areas of commerce,
consumers are less likely to assume that their similarly branded product comes from the same
source.'" YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x 392, 395 (2d Cir.
2003).68/
First, New Balance and Denimafia do not compete for the same consumers. (Dkt.
No. 89: Defs. Rule 56.1 Stmt. ¶¶ 57-58; see pages 11-14 above.) They appeal to different audiences
in different sectors of the market: New Balance's Minimus line appeals to an athletic audience in the
66/
See, e.g., Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App'x 615, 619 (2d Cir. 2008); J.T.
Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *17 (S.D.N.Y. May 8, 2013);
O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 522 (S.D.N.Y. 2008);
First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 02 Civ. 3691, 03 Civ. 707, 2004 WL
1575396 at *9 (S.D.N.Y. July 15, 2004).
67/
See, e.g., J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *17; O'Keefe v. Ogilvy &
Mather Worldwide, Inc., 590 F. Supp. 2d at 522.
68/
See also, e.g., Savin Corp. v. Savin Grp., 391 F.3d at 458 ("'To the extent goods . . . serve
the same purpose, fall within the same general class, or are used together, the use of similar
designations is more likely to cause confusion.'"); O'Keefe v. Ogilvy & Mather Worldwide,
Inc., 590 F. Supp. 2d at 522 ("The Second Circuit has explained that 'ordinarily, little
confusion will result when the junior use [of a similar mark] is in an area of commerce that
is outside the senior owner's area.'"); First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc.,
2004 WL 1575396 at *9 ("'[T]he closer the secondary user's [services] are to those the
consumer has seen under the prior user's brand, the more likely that the consumer will
mistakenly assume a common source.'"); 4 J. Thomas McCarthy, McCarthy on Trademarks
& Unfair Competition § 23:10 (4th ed. 2013) ("Reverse confusion will not be likely if the
goods or services of the parties are not competitive, the respective markets are separated and
the advertising of the parties is directed at different types of purchasers.").
39
market for running shoes and fitness apparel, while Denimafia's denim products appeal to an urban,
fashion-aware audience in the market for denim streetwear.69/ The record is replete with evidence
establishing that Denimafia and New Balance are not competitors.70/
Second, the products are sold through different channels. (See pages 12-13 above.)
Since 2009, the only way to purchase Denimafia products is by contacting Rucci directly and
making an inquiry. (See page 13 above.) Products from New Balance's Minimus line, which
launched in 2011, may be purchased in New Balance stores, on New Balance's website, and through
brick-and-mortar and online footwear and apparel retailers. (See page 13 above.) The absence of
overlapping channels of distribution supports a finding that the parties' products are not
competitively proximate and, therefore, consumer confusion is unlikely. See, e.g., J.T. Colby & Co.
v. Apple Inc., 2013 WL 1903883 at *17-18 ("Although the products of the parties each relate to
books, they are not proximate in the marketplace. . . . [T]he parties' products are sold through
different channels. The plaintiffs' products are sold in brick-and-mortar stores and on third-party
websites like Amazon.com and BarnesandNoble.com. The plaintiffs' products are not available for
sale through the defendant's website, iTunes Store or iBookstore. The defendant's e-reader software,
on the other hand, is not available in brick-and-mortar stores or through third-party websites.
69/
See pages 11-14 above; see also, e.g., Dkt. No. 90: Edelman Aff. Ex. 29: Blundell Dep. at
56-57 (specialty denim products appeal to "a particular type of consumer" who "wants to be
different," "understand[s] where the denim comes from," "understand[s] the stitching, the
detailing," and can identify a "brand of jeans . . . just from the stitching on the back pocket
and the way the pocket was shaped"); Edelman Aff. Ex. 30: Blomquist Dep. at 67 (specialty
denim appealed to "very fashion conscious, young, trend -- trend setters").
70/
See page 13 above; see also, e.g., Defs. Rule 56.1 Stmt. ¶¶ 57-58; Edelman Aff. Ex. 1: Rucci
Dep. at 249 ("Q. Okay, but you were not [a] competitor of New Balance, correct? A. No.");
Edelman Aff. Ex. 29: Blundell Dep. at 65 ("Q. Would you consider New Balance to be a
competitor of 5EP? A. No."); Edelman Aff. Ex. 30: Blomquist Dep. at 110 ("Q. Would you
consider New Balance to be a competitor of 5EP? A. No.").
40
Instead, the iBooks software is only available to consumers as pre-installed software on Apple
devices or as a download from Apple's online App store.").71/
In opposition, Denimafia argues that there are issues of fact regarding proximity
because: (1) "The goods are sold in similar retail outlets – NB is not limited to athletic/technical
sports apparel"; (2) "Denimafia and New Balance have attended the same trade shows"; and (3)
"Denimafia and New Balance appeal to a similar target audience, especially given New Balance's
increased expansion into a lifestyle brand." (Dkt. No. 103: Denimafia Opp. Br. at 10-11.)
Denimafia's claim that the relevant products "are sold in similar retail outlets" is
unsupported by the record and flatly contradicted since Denimafia concedes that its products have
not been available in stores since 2009 while New Balance's Minimus line was launched in 2011.
(See pages 11-13 above; see also Edelman Aff. Ex. 1: Rucci Dep. at 251: "Q. To your knowledge,
do you know that New Balance and 5EP jeans have ever been sold in the same stores at the same
time? A. No.") Moreover, it would be immaterial if the products were "sold in similar retail
outlets" or that the parties "have attended the same trade shows," since even products that are sold
in different areas of the same retail outlets are not considered proximate where, as here, they serve
different purposes and are not in competition. See, e.g., W.W.W. Pharm. Co. v. Gillette Co., 984
F.2d 567, 573-74 (2d Cir. 1993) ("These products do not compete nor serve the same purpose,
although they may both be generally defined as personal care products. The two products do share
some of the same channels of trade but this factor alone does not make them proximate. [S]ince
71/
See also, e.g., Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 491
(S.D.N.Y. 2004) ("Plaintiffs' CDs, unlike defendants' CDs, do not appear to be sold in
traditional music store or outlets. Nor are they sold through Amazon.com or other on-line
stores. [Plaintiff's owner] testified that his CDs are sold 'primarily' through his performances
and website. Based upon these facts, there is little doubt that consumers would be confused
by the proximity of the parties' products because the parties' recording[s] are sold through
different channels of distribution." (citations omitted)).
41
modern marketing methods tend to unify widely different types of products in the same retail outlets
or distribution networks, . . . this factor is not of overriding importance. These products are not
displayed in the same areas of food or drug stores, the lip balm being sold generally at the check out
stand and the deodorant/anti-perspirant in a section devoted to such products. This factor, then, is
of little help to [plaintiff's] argument that there is a likelihood of confusion." (citation & quotations
omitted)).72/
Denimafia's remaining arguments—that "NB is not limited to athletic/technical sports
apparel" and "Denimafia and New Balance appeal to a similar target audience"—essentially claim
that the parties are competitively proximate because their products fall under the same broad
category of goods, i.e., apparel. (See Denimafia Opp. Br. at 10-11.) Although both parties' products
relate to apparel generally, they are not proximate in the marketplace. Denimafia is a fashionforward company known for its denim pants, which since 2009 are purchasable only by making a
direct inquiry to Rucci. (See pages 13-14 above.) New Balance is an athletic footwear company
that uses the mark most often in connection with its technical running products, sold primarily at
athletic and footwear stores (including New Balance's stores and website). Put simply, a consumer
in the market for running shoes or athletic apparel would not purchase Denimafia's products in lieu
72/
See also, e.g., Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981) ("With regard
to the structure of the market, both products are eventually sold to consumers in retail stores.
However, since 'modern marketing methods tend to unify widely different types of products
in the same retail outlets or distribution networks,' this factor is not of overriding importance.
Within retail food stores, the record shows that the products are shelved in different sections
whenever space permits . . . ." (citation omitted)); Sunenblick v. Harrell, 895 F. Supp. 616,
629 (S.D.N.Y. 1995) ("Although the products are sold in the same channels of trade, they
are not sold side-by-side; rather, they are featured in different sections of the stores in which
they are sold, according to genre and not by label name. Hence, absent any evidence that
consumers of one will be potential consumers of the other, it is most likely that the consumer
entering a record store with the intention of purchasing one of [plaintiff's] products would
not even see defendants' products, much less the trademarks appearing thereon." (citation
omitted)), aff'd, 101 F.3d 684 (2d Cir.), cert. denied, 519 U.S. 964, 117 S. Ct. 386 (1996).
42
of New Balance's, and would not even encounter Denimafia's products where New Balance's
running shoes and athletic apparel are sold.73/
Without more, the fact that both parties' products generally are goods that people
wear, i.e., New Balance's footwear and Denimafia's denim apparel, is insufficient as a matter of law
to establish competitive proximity that would support a likelihood of confusion. See, e.g., W.W.W.
Pharm. Co. v. Gillette Co., 984 F.2d at 573-74 (that products "may both be generally defined as
personal care products" was "of little help to [plaintiff's] argument that there is a likelihood of
confusion"); Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 582 (2d Cir. 1991) ("Although both
[plaintiff's] publishing house and [defendant's] magazine are in the field of publishing, this does not
render them proximate."); Guthrie Healthcare Sys. v. ContextMedia, Inc., 12 Civ. 7992, 2014 WL
185222 at *12 (S.D.N.Y. Jan. 16, 2014) ("While both businesses broadly relate to health, it is true
that courts reject proximity analyses that are generalized at an overly high level." (emphasis added));
J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *17 ("Although the products of the parties
each relate to books, they are not proximate in the marketplace. [Defendant] is a technology
73/
Although New Balance produced non-technical t-shirts using the <=> design, they were
promotional giveaways distributed to wholesale buyers and retailers in connection with the
Minimus launch; the t-shirts were never for sale in the consumer marketplace. (See page 12
above; see also Defs. Rule 56.1 Stmt. & Dkt. No. 108: Denimafia Counter-Stmt. ¶ 121.)
See, e.g., Major League Baseball Props., Inc. v. Opening Day Prods., Inc., 385 F. Supp. 2d
256, 259, 262, 267 (S.D.N.Y. 2005) (Defendant "intended to sell its merchandise under the
mark 'opening day' year round and not just in connection with opening days. . . . In
connection with [plaintiff's] promotion [of the opening days of Major League Baseball
seasons], baseball caps and baseballs were given away as souvenirs to fans attending the
opening day games. They bore a baseball diamond design containing the term 'opening day'
to designate the opening day of the season . . . . No clothing items of any kind bearing the
term 'opening day' were ever sold to the general public . . . . The third factor, competitive
proximity, does not support defendant's claim. Plaintiff's product was used on promotional
giveaways and distributed at Major League Baseball stadiums in connection with the
opening day of the season. The fact that both parties use the term is insufficient to find
competitive proximity." (emphasis added)).
43
company that offers a computer software called iBooks that enables users to download and read
ebooks. The plaintiffs are publishing companies that use the ibooks imprint on their physical books
and ebooks. These products do not directly compete. While the ebooks that can be read on
[defendant's] iBooks software may compete directly with the plaintiffs' physical books and ebooks,
a consumer could not purchase the defendant's product—software—in place of the
plaintiffs'—books.").74/
Accordingly, the competitive proximity factor weighs heavily in New Balance's
favor.
D.
Bridging the Gap
"'Bridging the gap' refers to the likelihood that the senior user will enter the junior
user's market in the future, or that consumers will perceive the senior user as likely to do so." Star
Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 387 (2d Cir. 2005), cert. denied, 547 U.S. 1019, 126
74/
See also, e.g., Vitarroz Corp. v. Borden, Inc., 644 F.2d at 967 ("[T]he products in this case
differ in ways that may be deemed material to consumers. Although both are snack foods
that can be eaten plain or used as a scoop for dips, only the crackers are ordinarily buttered
or served with hors d'oeuvres. In addition, the ingredients of the products are markedly
different. . . . More important, the record shows that [plaintiff] targets its product at a distinct
group of consumers, who shop for the [plaintiff's] name in specialty stores, many of which
do not carry [defendant's] chips. This factor is entitled to some weight, just like the
analogous factor of the sophistication of the relevant purchasers."); Strange Music, Inc. v.
Strange Music, Inc., 326 F. Supp. 2d at 491 (fact that "both of the parties' products exist
within the same industry" does not establish competitive proximity likely to cause confusion
where products "are sold through different channels of distribution"); Sunenblick v. Harrell,
895 F. Supp. at 629 ("[T]he trend toward fusion within the respective categories of music
does not establish that consumers of one genre of music have become consumers of the
other. Fusion notwithstanding, the products at issue here are marketed differently and are
still sold in separate sections of record stores."); Restatement (Third) of Unfair Competition
§ 21 cmt. g (1995) ("Men's suits and [] men's ties bearing similar marks are more likely to
be associated with a common source than are men's suits and women's shoes, in part because
the latter kinds of goods are normally sold in different stores or departments and are
purchased by different consumers.").
44
S. Ct. 1570 (2006).75/ "[T]he relevant inquiry is whether consumers are likely to associate the
respective goods, services, or businesses of the parties by assuming that the prior user has expanded
into the other market, not whether the prior user in fact intends to do so." Restatement (Third) of
Unfair Competition § 21 cmt. j (1995).76/ Thus, "unless the expansion is so imminent as to create
a present likelihood of confusion, the intent of the prior user to expand or its activity in preparation
to do so, unless known by prospective purchasers, does not affect the likelihood of confusion."
Restatement (Third) of Unfair Competition § 21 Reporters' Note to cmt. j.77/
75/
See, e.g., Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App'x 615, 619 (2d Cir. 2008) ("This
factor considers the likelihood that plaintiff will enter into the defendant's market—it
protects the plaintiff's interest in being able to enter a related field at some future time.");
Savin Corp. v. Savin Grp., 391 F.3d 439, 459-60 (2d Cir. 2004), cert. denied, 546 U.S. 822,
126 S. Ct. 116 (2005); YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x 392,
395 (2d Cir. 2003) ("This factor refers to the 'senior user's interest in preserving avenues of
expansion and entering into related fields.'"); J.T. Colby & Co. v. Apple Inc., 11 Civ. 4060,
2013 WL 1903883 at *18 (S.D.N.Y. May 8, 2013); O'Keefe v. Ogilvy & Mather Worldwide,
Inc., 590 F. Supp. 2d 500, 523 (S.D.N.Y. 2008).
76/
See also, e.g., Restatement (Third) of Unfair Competition § 21 cmt. j ("If consumers believe,
even though falsely, that the natural tendency of producers of the type of goods marketed by
the prior user is to expand into the market for the type of goods marketed by the subsequent
user, confusion may be likely. On the other hand, the actual intentions of the prior user with
respect to future expansion will not ordinarily affect the likelihood that prospective
purchasers are confused.").
77/
See, e.g., YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x at 395 ("The
expansion must occur or be likely to occur in the 'reasonably near future.'"); Lang v. Ret.
Living Publ'g Co., 949 F.2d 576, 582 (2d Cir. 1991) ("'[T]he intent of the prior user to
expand or its activities in preparation to do so, unless known by prospective purchasers, does
not affect the likelihood of confusion.'"); Private Eyes Sunglass Corp. v. Private Eye Vision
Ctr. of New Milford, P.C., No. CIV. B-89-45, 1992 WL 464228 at *9 (D. Conn. Aug. 13,
1992) ("The Court notes that even assuming that plaintiff intended to bridge this gap, the
intent of the prior user to expand or its activities in preparation to do so, unless known by
prospective purchasers, does not affect the likelihood of confusion. Plaintiff has produced
no evidence that prospective purchasers would assume that it was expanding into the eyecare
field." (citation & quotations omitted)), aff'd, Nos. 92-9000, 92-9050, 992 F.2d 321 (table),
1993 WL 125974 (2d Cir. Mar. 18, 1993); see also, e.g., Lebewohl v. Heart Attack Grill
LLC, 890 F. Supp. 2d 278, 295 (S.D.N.Y. 2012) ("A speculative intention is insufficient to
(continued...)
45
Denimafia argues that its "intent was always to expand the 5EP Logo beyond its
initial offerings," stating: "Denimafia's business plans included areas of planned expansion from
menswear to women's and children's. The plan had always been for 5EP to become a lifestyle brand,
where the five easy pieces would be five sets of garments, accessories, and shoes." (Dkt. No. 103:
Denimafia Opp. Br. at 11-12; see Dkt. No. 106: Rucci Aff. ¶ 69.) Denimafia argues that expansion
would occur "when resources allowed," and that its plans were unknown to its consumers because
"[b]usiness expansion plans are generally considered confidential and are not disclosed to
prospective customers until shortly before a new product launches." (Denimafia Opp. Br. at 12; see
Dkt. No. 108: Denimafia Rule 56.1 Counter-Stmt. ¶ 62; Rucci Aff. ¶¶ 70-71.) Thus, Denimafia does
not dispute that its alleged expansion plans were unknown to consumers, that its expansion was not
imminent or definite, or that it planned to expand into athletic footwear. (See Rucci Aff. ¶¶ 70-71;
Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶¶ 59-62.)
Aside from Rucci's unsubstantiated assertions, there is nothing in the record that
could plausibly support a claim that any kind of expansion by Denimafia is reasonably likely to
occur in the reasonably near future, since Denimafia has been virtually defunct since approximately
2009. (See Defs. Rule 56.1 Stmt. ¶¶ 71-77; see also pages 12-13 & n.27 above.) Indeed, if
Denimafia actually intended to expand into footwear, it would not have amended its trademark
registration to remove shoes and footwear, among other products, from the listed classes of goods
covered by trademark. (See page 6 above.) Denimafia fails to raise an issue of fact regarding the
possibility that it would bridge the gap, and this conclusion is not altered by Denimafia's unspecific
claims regarding the expansions of a "lifestyle brand" or of other "[f]ashion brands, including some
77/
(...continued)
demonstrate that bridging the gap is likely; a litigant should provide evidence of a concrete
expansion plan.").
46
of New Balance's competitors." (Denimafia Opp. Br. at 12.) See, e.g., Savin Corp. v. Savin Grp.,
391 F.3d at 460 ("Plaintiff claims that it intends to expand its involvement in the area of facilities
management, but the only evidence [P]laintiff presents to support this allegation is a statement [by
. . . Plaintiff's President and Chief Operating Officer,] that [P]laintiff intends to work[] in an office
environment and expand[] [into] whatever the customer needs. This statement fails to support any
inference that [P]laintiff intends to enter [D]efendants' market. We agree with the District Court's
conclusion that even drawing all inferences in Plaintiff's favor, this bare assertion fails to raise a
genuine issue of material fact that Plaintiff is likely to enter Defendants' corner of the marketplace."
(quotations & citation omitted)); YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x
at 395 ("Although [plaintiff], financially strapped and unable to maintain even a website, asserts that
it may consider franchising a restaurant chain under its name, this is not likely to occur in the
reasonably near future."); J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *19 ("The
hypothetical possibility that the plaintiffs might have developed a more robust presence in the
'digital space' in the absence of [defendant's] use of the . . . mark hardly demonstrates that the
plaintiffs were likely to bridge the gap between the publishing and computer software fields.
Characterizing the defendant's field as the 'digital space' would render this factor meaningless.
Many companies operate in the 'digital space' without offering remotely similar products.").78/
78/
See also, e.g., Lang v. Ret. Living Publ'g Co., 949 F.2d at 582; Strange Music, Inc. v.
Strange Music, Inc., 326 F. Supp. 2d 481, 493 (S.D.N.Y. 2004) ("Plaintiffs contend that they
intend to bridge the gap by 'expand[ing] [their] compositions to include many of the sounds
of rap and hip hop.' Such an intention does not equate to bridging the gap. In order to bridge
the gap, plaintiffs must demonstrate that they intend to enter the market of defendants and
that prospective customers are aware of this intention. Plaintiffs have failed to establish such
an ambition." (citations omitted)); Sunenblick v. Harrell, 895 F. Supp. 616, 630 (S.D.N.Y.
1995) ("While [plaintiff] suggested he might consider production of a jazz/hip-hop
combination such as one recent recording . . . , that is a far cry from joining the market for
hip-hop recordings as a competitor with [defendants]. It is evident that the motivating force
(continued...)
47
Accordingly, the bridging the gap factor weighs heavily in New Balance's favor.
E.
Actual Consumer Confusion
"Under the Lanham Act, actual confusion refers to 'consumer confusion that enables
a seller to pass his goods off as the goods of another.'" First Nat'l Bank of Omaha, Inc. v.
Mastercard Int'l Inc., 02 Civ. 3691, 03 Civ. 707, 2004 WL 1575396 at *10 (S.D.N.Y. July 15, 2004).
"Although evidence of actual confusion is especially probative of a likelihood of confusion, a
plaintiff does not need to show the existence of actual confusion in order to prevail under the
Lanham Act." J.T. Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *19 (S.D.N.Y.
May 8, 2013).79/ Actual confusion may be demonstrated by consumer surveys and anecdotal
evidence of consumer confusion. See, e.g., Paco Sport, Ltd. v. Paco Rabanne Perfumes, No. 0078/
(...continued)
behind [plaintiff's] company was his dream to produce one particular variety of jazz music,
and to record artists who otherwise might never have been heard. Consequently, the court
finds that [plaintiff] has no present plans to enter the hip-hop market, and is unlikely to do
so in the future. This factor, then, weighs strongly against a finding of confusion, and favors
defendants."), aff'd, 101 F.3d 684 (2d Cir.), cert. denied, 519 U.S. 964, 117 S. Ct. 386
(1996); Horn's, Inc. v. Sanofi Beaute, Inc., 963 F. Supp. 318, 325 (S.D.N.Y. 1997) ("Plaintiff
contends that it has long intended to market clothing, fashion accessories and perfume under
its . . . mark. In support of this assertion, plaintiff offers [a] declaration[] . . . establish[ing]
that companies having an expertise in fashion often market perfumes. . . . That a provider
of fashion-related consulting services and trade publications would enter the fragrance
market, however, is hardly a foregone conclusion. Indeed, plaintiff has failed to show that
it had any concrete plans to market a perfume. . . . Although plaintiff alleges that it 'has been
approached . . . to develop a perfume product under the . . . mark,' there is no evidence of
such discussions in the record. . . . [N]one of [plaintiff's] plans to develop and market a
fragrance is concrete, nor has any materialized. Since plaintiff has not shown that its plans
to enter the fragrance market are more than 'wholly speculative,' this factor militates against
finding a likelihood of confusion." (citation omitted)).
79/
See, e.g., Savin Corp. v. Savin Grp., 391 F.3d 439, 459 (2d Cir. 2004) ("'[I]t is black letter
law that actual confusion need not be shown to prevail under the Lanham Act . . . .'
Nonetheless, it has been noted that: 'There can be no more positive or substantial proof of
the likelihood of confusion than proof of actual confusion.'"), cert. denied, 546 U.S. 822, 126
S. Ct. 116 (2005); Real News Project, Inc. v. Indep. World Television, Inc., 06 Civ. 4322,
2008 WL 2229830 at *17 (S.D.N.Y. May 27, 2008) (Lynch, D.J.).
48
7344, 234 F.3d 1262 (table), 2000 WL 1721126 at *5 (2d Cir. Nov. 16, 2000); J.T. Colby & Co. v.
Apple Inc., 2013 WL 1903883 at *17 ("When parties do offer evidence of actual confusion, or lack
thereof, the evidence commonly includes anecdotal evidence of consumer confusion and consumer
confusion surveys."); Real News Project, Inc. v. Indep. World Television, Inc., 2008 WL 2229830
at *17. Where a defendant submits survey evidence "tending to rebut charges of actual consumer
confusion" and plaintiff offers only de minimis anecdotal evidence, plaintiff's "failure to present its
own consumer survey weighs against a finding of consumer confusion." Star Indus., Inc. v. Bacardi
& Co., 412 F.3d 373, 388 (2d Cir. 2005), cert. denied, 547 U.S. 1019, 126 S. Ct. 1570 (2006).80/
Denimafia did not submit survey evidence of actual confusion in the marketplace,
choosing instead to rely on five anecdotal instances of alleged consumer confusion, documented by
five emails and text messages sent to Rucci from her friends and colleagues. (See page 15 above.)
New Balance, on the other hand, submitted a consumer survey conducted by its expert Dr. Steckel,
which showed a zero percent rate of reverse confusion with respect to the source of jeans bearing
the <=> mark. (See pages 18-19 above.) The Court finds that no reasonable juror could find that
Denimafia's evidence demonstrates any actual confusion and, thus, no reasonable juror could find
that Denimafia's evidence outweighs New Balance's expert survey results.
80/
See, e.g., Natural Organics, Inc. v. Nutraceutical Corp., 271 F. App'x 89, 90 (2d Cir. 2008);
Savin Corp. v. Savin Grp., 391 F.3d at 459 ("A single 'anecdote[] of confusion over the
entire course of competition,' however, 'constitute[s] de minimis evidence insufficient to
raise triable issues.'"); Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 12324 (2d Cir. 2001); Paco Sport, Ltd. v. Paco Rabanne Perfumes, 2000 WL 1721126 at *5
("The district court discounted the testimony of Paco Rabanne's employees and associates
as unreliable and relied on Paco Sport's survey. . . . The district court did not err in holding
this factor to favor Paco Sport."); Guthrie Healthcare Sys. v. ContextMedia, Inc., 12 Civ.
7992, 2014 WL 185222 at *7 (S.D.N.Y. Jan. 16, 2014); Real News Project, Inc. v. Indep.
World Television, Inc., 2008 WL 2229830 at *17 ("A plaintiff's failure to submit a consumer
survey weighs against a finding of consumer confusion, because the 'absence of surveys is
evidence that actual confusion cannot be shown.'" (citation omitted)); Strange Music, Inc.
v. Strange Music, Inc., 326 F. Supp. 2d 481, 493-94 (S.D.N.Y. 2004).
49
As an initial matter, none of Denimafia's five alleged instances demonstrates actual
confusion. In each instance, the individuals reportedly saw the <=> mark on a New Balance
advertisement and contacted Rucci to report what they had seen and, as her friends and colleagues,
to inquire whether Denimafia and New Balance were working on a collaboration; none of them
testified that New Balance's use of the <=> mark affected a purchasing decision of any kind or
confused them as to the source of the products. (See pages 15-18 above.) See, e.g., O'Keefe v.
Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 524 (S.D.N.Y. 2008) ("[B]ecause 'the
relevant confusion is that which affects the purchasing and selling of the goods or services in
question,' to be evidence of actual confusion in the marketplace, the testimony must indicate that
the 'confusion affected [the potential customer's] determination to purchase [plaintiff's] product.'").81/
Even assuming arguendo that Denimafia's alleged incidents showed confusion, five anecdotes from
Rucci's friends and colleagues since New Balance began using the <=> mark constitutes de minimis
evidence, insufficient to raise a triable issue. See, e.g., Nora Beverages, Inc. v. Perrier Grp. of Am.,
Inc., 269 F.3d at 123-24 (Plaintiff "argues that the district court erred by not considering the
testimony of [plaintiff's] employees regarding two anonymous consumers who had allegedly
inadvertently grabbed [defendant's] bottles when they had intended to select [plaintiff's] bottles. . . .
81/
See also, e.g., Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d at 124 ("Inquiries
about the relationship between an owner of a mark and an alleged infringer do not amount
to actual confusion. Indeed, such inquiries are arguably premised upon a lack of confusion
between the products such as to inspire the inquiry itself."); Guthrie Healthcare Sys. v.
ContextMedia, Inc., 2014 WL 185222 at *7 ("[A]ccording to plaintiff, . . . a design firm[]
advised [defendant] of the similarity of the [plaintiff's] Trademark and the [defendant's] . .
. . [T]hose statements cannot raise a triable issue as to actual consumer confusion. At best,
such statements—if admissible—might support possible consumer confusion." (quotations
omitted)); Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 320 (S.D.N.Y.)
("[G]iven their professional association with the plaintiff, Paco Rabanne's witnesses'
testimony regarding their purported confusion does not demonstrate actual consumer
confusion in the marketplace."), aff'd, No. 00-7344, 234 F.3d 1262 (table), 2000 WL
1721126 (2d Cir. Nov. 16, 2000).
50
[W]e do not believe that the district court erred in finding that two anecdotes of confusion over the
entire course of competition constituted de minimis evidence insufficient to raise triable issues.").82/
Denimafia does not offer a rebuttal survey and does not seek to exclude New
Balance's survey, but argues that the Court should "not find Dr. Steckel's survey results persuasive."
(Dkt. No. 103: Denimafia Opp. Br. at 13 n.6, 16; see pages 15, 19 n.40 above.) Denimafia asserts
three primary objections to Dr. Steckel's survey: (1) an Eveready survey format was not appropriate
in this reverse confusion context; (2) the surveyed universe was overly broad and should have been
limited to males between the ages of eighteen and forty-five;83/ and (3) the test cell stimuli was
incorrect because it used "the only instance in which the 5EP LOGO is rotated 90 degrees clockwise
and appears vertically." (Denimafia Opp. Br. at 13-15; Denimafia Rule 56.1 Counter-Stmt. ¶¶ 12733.) The Court considers each objection in turn.
First, Denimafia argues that the Eveready survey format only is appropriate in cases
of forward confusion involving a senior user with a strong mark. (Denimafia Opp. Br. at 14.)84/ Dr.
82/
See also, e.g., Natural Organics, Inc. v. Nutraceutical Corp., 271 F. App'x at 90 ("Anecdotal
evidence of consumer confusion offered by [plaintiff] does not compel a finding of actual
customer confusion in the absence of direct consumer testimonials or surveys."); Star Indus.,
Inc. v. Bacardi & Co., 412 F.3d at 387-88 ("The district court found that the 'actual consumer
confusion' factor militated against finding a likelihood of confusion. In light of the record,
this holding was not clearly erroneous. The court explained that [plaintiff's] evidence of
actual confusion was extremely weak . . . . [Plaintiff's] evidence of actual confusion
consisted entirely of testimony by several interested witnesses recounting a handful of
anecdotes . . . ."); see also cases cited at page 48 n.80 above.
83/
Denimafia defines its likely consumer demographic as between the ages of 18 and 25 in
some instances, and between the ages of 18 and 45 in others. (Compare, e.g., Denimafia
Opp. Br. at 14, with Dkt. No. 108: Denimafia Rule 56.1 Counter-Stmt. ¶ 127, and Dkt. No.
106: Rucci Aff. ¶ 72.)
84/
The Court notes that Denimafia contradicts itself by arguing in favor of the strength of its
mark in the context of the first Polaroid factor, and then arguing that the Eveready survey
was improper due to the weakness of Denimafia's mark. (Denimafia Opp. Br. at 5-7; see
(continued...)
51
Steckel testified that he chose an Eveready survey specifically because the format "is often useful
when a potential respondent can identify that the product . . . in question comes from a specific
source, but cannot name that source." (Dkt. No. 109: Benjamin Aff. Ex. 7: Steckel Dep. at 16, 55.)
Further, Dr. Steckel testified that because an Eveready survey displays only one product, as
compared to other formats which ask respondents to compare multiple products displayed
simultaneously or sequentially, it was best suited to replicate the relevant market conditions in this
case, since "the distribution methods" of Denimafia's and New Balance's products are insulated from
each other, such that consumers would not see both Denimafia's products and New Balance's
products at the same time. (Steckel Dep. at 54-56.) The Court is satisfied that Dr. Steckel had good
reason for employing the Eveready format for reverse confusion analysis. See, e.g., Kargo Global,
Inc. v. Advance Magazine Publishers, Inc., 06 Civ. 550, 2007 WL 2258688 at *8 (S.D.N.Y. Aug.
6, 2007) ("Here, where [plaintiff] has alleged that reverse confusion has occurred . . . , it would have
been far more replicative of actual marketplace conditions to have [used] . . . the Eveready format.
A survey that utilizes the Eveready format, by displaying only a single party's mark and attempting
to discern whether respondents are confused as to the source of the mark, is much more reliable
because it more accurately approximates actual market conditions by ensuring that respondents are
not made artificially aware of the other party's trademark." (citations & quotations omitted)); cf.,
e.g., THOIP v. Walt Disney Co., 788 F. Supp. 2d 168, 178-81 (S.D.N.Y. 2011) ("in testing for
reverse confusion," plaintiff's expert "failed to replicate actual marketplace conditions" by designing
a "sequential array survey" in which respondents were exposed to both parties' products, "despite
(...continued)
pages 28-30 above.)
52
the absence of evidence that such products would be encountered in close proximity in the actual
marketplace").85/
Second, Denimafia argues that the surveyed universe was overly broad and should
have been limited to males between the ages of eighteen and either twenty-five or forty-five, which
it purports to be the likely buyers of Denimafia's jeans. (See page 50 above.)86/ It is true that
Denimafia's consumers are the appropriate survey universe. See, e.g., J.T. Colby & Co. v. Apple
Inc., 2013 WL 1903883 at *19 ("In the context of a case where reverse confusion is alleged, the
senior user's consumers are the appropriate class of consumers to survey.").87/ Dr. Steckel defined
85/
Moreover, any diminution in the value attributed to the survey as a result of the format
would, at most, reduce the evidentiary weight of Dr. Steckel's survey, but it would not tip
the scale in Denimafia's favor. See, e.g., Akiro LLC v. House of Cheatham, Inc., 946 F.
Supp. 2d 324, 339 (S.D.N.Y. 2013) (A "reasonable juror could discount [defendant's] survey
evidence to some degree and find that this Polaroid factor favors [defendant] only weakly.
. . . [B]y design [the Eveready format] will underestimate confusion for marks that are not
highly accessible in a consumer's memory. . . . [A] reasonable juror could conclude that
[plaintiff's] mark is weak enough to diminish somewhat the evidentiary weight of the
[defendant's] survey.").
86/
Denimafia's demographics representation is entirely unsubstantiated. (See Dkt. No. 115:
Defs. Reply Br. at 7 ("This claim, however, is unsupported and contradicted by the evidence
in this case. Ms. Rucci supplies no gender based sales data, customer surveys, or other data
to support her claim. There is no evidence to suggest that Denimafia limited its minimal
marketing efforts to men."); Benjamin Aff. Ex. 7: Steckel Dep. at 110-11 (Dr. Steckel would
not think it appropriate to "limit the universe to . . . 95 percent male and 5 percent female
respondents" solely "[b]ased on [Denimafia's] word of the people who have bought" its
jeans).)
87/
See, e.g., Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 583 (2d Cir. 1991) ("Evidence of
actual reverse confusion that might support [plaintiff's] claim would involve purchasers or
prospective purchasers of [plaintiff's] products who believed that they were produced by or
affiliated with [defendant's] magazine."); Vista Food Exch., Inc. v. Vistar Corp., No. 03-CV5203, 2005 WL 2371958 at *6 (E.D.N.Y. Sept. 27, 2005) ("[W]hen the issue is whether
consumers mistakenly believe that the senior user's products actually originate from the
junior user ('reverse' confusion), the appropriate universe consists of the senior user's
customers."); 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §
23:10 (4th ed. 2013).
53
the relevant population as Internet shoppers age eighteen or above who purchased jeans in the $100
to $1,000 price range within the past twelve months. (See page 19 above.) In describing why age
and gender demographics were not factors in defining the universe of qualified survey respondents,
Dr. Steckel testified: "It's not relevant just because a market is distributed that way. . . . The most
relevant thing was whether they would potentially buy the product, and I -- I screened for that by
asking whether they bought designer jeans in the past year, and how much they paid for them."
(Benjamin Aff. Ex. 7: Steckel Dep. at 50-51, 110-11.)
Denimafia offers no expert rebuttal evidence that Dr. Steckel's methodology was
improper. (See page 19 n.40 above.)88/ Moreover, any argument that a narrower subset of the
surveyed universe would have returned a markedly different result is weakened significantly by the
fact that Dr. Steckel's survey returned zero incidents of confusion. (See page 19 above.)
Third, Denimafia argues that Dr. Steckel used an improper test image because the
hangtag displayed the <=> mark vertically instead of horizontally. (See page 50 above.) This
argument ignores the fact that "the image in the survey was taken from the only photograph of the
actual product with a hangtag bearing the mark shown on Denimafia's website." (Defs. Reply Br.
at 7 n.9.) The Court also notes that, of the product images Denimafia has submitted to this Court,
the hanging tag which displays the mark vertically is the only one that shows the <=> mark without
the 5EP and/or Denimafia brand names in a larger font.89/ The lack of alternative images "actually
88/
See, e.g., 6 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 32:159
("The universe may be narrowed from the population at large in various ways:
geographically (people living in California); commercially (retail dealers or consumers);
according to buying habits (prospective purchasers of pleasure boats); or by any other
meaningful criteria which the law sets down as limiting or defining the class of persons
whose state of mind is at issue.").
89/
The hanging tag does have the words "5EP Project" in very small font on the top of the tag,
(continued...)
54
underscore[s] the fact that plaintiffs' mark is always surrounded by contextual information linking
the mark to" its source. J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *21 n.31. Finally,
Denimafia's third argument is meritless for the more important reason that the evidence in the record
supports that the image Dr. Steckel used most replicates the way the tag would hang in the
marketplace. Cf., e.g., THOIP v. Walt Disney Co., 690 F. Supp. 2d 218, 238-39 & n.153 (S.D.N.Y.
2010) ("The shirts used in the survey did not bear the neck labels and hang tags that would have
been attached to the shirts in the marketplace. . . . [Plaintiff's survey expert's] failure to use hang tags
and neck labels clearly is a deviation from actual marketplace conditions." (collecting cases)).
Accordingly, the actual confusion factor weighs heavily in New Balance's favor.
F.
Intent
"As indirect evidence of likelihood of confusion, courts consider whether the
defendant adopted the similar mark with the intent to capitalize on the plaintiff's reputation and
goodwill or to foment confusion between the two marks." J.T. Colby & Co. v. Apple Inc., 11 Civ.
4060, 2013 WL 1903883 at *23 (S.D.N.Y. May 8, 2013).90/ In reverse confusion cases, however,
"'it is unlikely that a larger and better known junior user intends to trade on the reputation of the
lesser-known plaintiff,'" and "'[t]his factor is therefore less relevant in a reverse confusion inquiry,
although any finding that the defendant adopted its mark with an intent to cause any form of
confusion should weigh in favor of the plaintiff.'" THOIP v. Walt Disney Co., 788 F. Supp. 2d 168,
89/
(...continued)
but that branding is not readable in the image used for the survey. (See pages 8-9, 19
above.)
90/
See, e.g., U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., 511 F. App'x 81, 84 (2d Cir.
2013); Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 388 (2d Cir. 2005), cert. denied, 547
U.S. 1019, 126 S. Ct. 1570 (2006); Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269
F.3d 114, 124 (2d Cir. 2001).
55
184 n.95 (S.D.N.Y. 2011) (quoting First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 02 Civ.
3691, 03 Civ. 707, 2004 WL 1575396 at *12 (S.D.N.Y. July 15, 2004)).91/
"The burden of proving bad faith rests with the party claiming infringement." J.T.
Colby & Co. v. Apple Inc., 2013 WL 1903883 at *23 (citing Star Indus., Inc. v. Bacardi & Co., 412
F.3d at 388). "The failure of a defendant to conduct a trademark search, however, is not sufficient
to demonstrate bad faith." J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *23.92/ "Indeed,
even 'actual knowledge of another's prior registration of a very similar mark may be consistent with
good faith.'" J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *23.93/ "A defendant may also
choose to offer evidence of its good faith, such as the fact that the defendant selected a mark which
reflected the product's characteristics, requested a trademark search prior to the mark's selection, or
relied on the advice of counsel in adopting the mark." J.T. Colby & Co. v. Apple Inc., 2013 WL
1903883 at *23; see, e.g., Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 388.
Denimafia argues that questions of fact exist as to New Balance's intent in adopting
the mark because New Balance knew of Denimafia's mark and chose to use it despite options of
"variations more different from the 5EP LOGO." (Dkt. No. 103: Denimafia Opp. Br. at 16.) New
91/
See, e.g., Birmingham v. Mizuno USA, Inc., No. 09-CV-0566, 2011 WL 1299356 at *17
n.20 (N.D.N.Y. Mar. 31, 2011); 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition § 23:10 (4th ed. 2013) (in reverse confusion cases, the inquiry should be
"whether, despite acting innocently, the junior user 'was careless in not conducting proper
research to avoid infringement prior to development of its trademark'").
92/
See, e.g., Savin Corp. v. Savin Grp., 391 F.3d 439, 460 (2d Cir. 2004), cert. denied, 546 U.S.
822, 126 S. Ct. 116 (2005); Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 388; Guthrie
Healthcare Sys. v. ContextMedia, Inc., 12 Civ. 7992, 2014 WL 185222 at *8 (S.D.N.Y. Jan.
16, 2014).
93/
See, e.g., Savin Corp. v. Savin Grp., 391 F.3d at 460; Star Indus., Inc. v. Bacardi & Co., 412
F.3d at 388; First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 2004 WL 1575396 at
*10.
56
Balance does not dispute its knowledge of Denimafia's mark, but argues that the evidence
nevertheless establishes that it acted in good faith because it shows that New Balance used an
advertising agency to develop ideas that "directly reflect the product's characteristics of minimal
design," and that it took affirmative steps "to further distinguish the appearance of the symbols from
Denimafia by using a typeface and overall design that was distinct from Denimafia." (Dkt. No. 88:
Defs. Br. at 22.) New Balance further argues that "the evidence demonstrates that at the time New
Balance began using the symbols, Denimafia was a defunct denim company that did not sell
footwear or athletic apparel, and there was no possibility that the use of the symbols could impact
Denimafia or cause confusion." (Dkt. No. 115: Defs. Reply Br. at 8.)
Denimafia, which has the burden of proof, has not identified any evidence raising an
issue of fact as to whether New Balance used the mark with the intent to cause confusion. See, e.g.,
YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x 392, 395 (2d Cir. 2003) (Defendant
"exhibited good faith in this matter. It enlisted an outside attorney to conduct a trademark search
. . . . Only . . . upon independently determining that its use did not infringe on [plaintiff's] rights, did
[defendant] begin using the Slogan. Such measures indicate [defendant's] good faith."); Nora
Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d at 125 ("To prove [defendant's] bad faith,
[plaintiff] points to the fact that [defendant] ultimately selected a ribbed cylindrical PET bottle from
the 'limitless array' of available design options. [Plaintiff] contends that insofar as the good faith
factor involves a question of [defendant's] state of mind, it is an issue of fact that should not be
resolved on summary judgment. . . . We believe that the district court was correct to find in this case
that copying alone was insufficient to establish bad faith. The only evidence of bad faith that
[plaintiff] proffered was [defendant's] bottle. At the same time, [defendant] offered evidence that
its bottle choice was based upon a desire to compete with [another company], not [plaintiff]. Also,
57
by placing its labels prominently upon its bottles, [defendant] negated an inference of intent to
deceive consumers as to the source of its product.").94/
Accordingly, the intent factor is neutral.
G.
Quality
"'Generally, quality is weighed as a factor when there is an allegation that a low
quality product is taking unfair advantage of the public good will earned by a well-established high
quality product.'" Sly Magazine, LLC v. Weider Publ'ns L.L.C., 346 F. App'x 721, 723 (2d Cir.
2009). Where, as here, there are no allegations or evidentiary showings pertaining to the products'
quality (see Dkt. No. 88: Defs. Br. at 17 n.17), this factor is not weighed in either party's favor. See,
e.g., Sly Magazine, LLC v. Weider Publ'ns L.L.C., 346 F. App'x at 723 ("The court properly found
94/
See also, e.g., W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993)
(Defendant "selected a name which matched the image it was trying to project . . . .
[Defendant's] knowledge of [plaintiff's] trademark does not necessarily give rise to an
inference of bad faith, 'because adoption of a trademark with actual knowledge of another's
prior registration of a very similar mark may be consistent with good faith.' [Plaintiff] has
not put forth any evidence that [defendant] intended to promote confusion between the
products or appropriate [plaintiff's] good will and therefore has not shown any bad faith on
[defendant's] part." (citations omitted)); Guthrie Healthcare Sys. v. ContextMedia, Inc., 2014
WL 185222 at *7-9 (defendant used "a third-party graphic artist" and instructed him "to
create a logo that fit their characteristics and desired brand"); J.T. Colby & Co. v. Apple Inc.,
2013 WL 1903883 at *23 ("The plaintiffs have offered no evidence indicating that
[defendant] adopted the . . . mark in bad faith. This absence of evidence is not surprising
given the plaintiffs' small footprint in the marketplace. The defendant, on the other hand,
has offered substantial evidence of its good faith. First, the defendant selected a mark that
describes characteristics of its product. . . . The mark is also related to marks [defendant] has
adopted for other products and services it offers. The defendant also employed counsel to
conduct a trademark search . . . ." (fn. omitted)); Medici Classics Prods., LLC v. Medici
Grp., LLC, 683 F. Supp. 2d 304, 313 (S.D.N.Y. 2010) ("[G]iven [plaintiff's] low sales
volume and the lack of evidence of secondary meaning, it is patently unreasonable to
conclude that defendants sought to usurp that reputation or to otherwise capitalize on it.
Moreover, even if defendant . . . did know of plaintiff's registration, '[p]rior knowledge of
a senior user's mark does not, without more, create an inference of bad faith.'"); O'Keefe v.
Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 525 (S.D.N.Y. 2008); Strange
Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 494 (S.D.N.Y. 2004).
58
that there was no allegation or evidence that the Defendants' magazine is of inferior quality.
Because there was no difference in quality of product, it was improper to weigh this factor in favor
of the Defendants; this factor should be considered neutral." (citation omitted)); Star Indus., Inc. v.
Bacardi & Co., 412 F.3d 373, 389 (2d Cir. 2005) ("The quality factor does not support either party.
. . . [A]bsent factual findings or evidence one way or the other, this factor is at most evenly
balanced."), cert. denied, 547 U.S. 1019, 126 S. Ct. 1570 (2006); W.W.W. Pharm. Co. v. Gillette
Co., 984 F.2d 567, 575 (2d Cir. 1993) (plaintiff "did not allege that [defendant's] products are of
inferior quality and therefore the absence of this factor also supports the district court's
determination" of no reverse confusion); J.T. Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL
1903883 at *25 (S.D.N.Y. May 8, 2013); Medici Classics Prods., LLC v. Medici Grp., LLC, 683
F. Supp. 2d 304, 313 (S.D.N.Y. 2010) ("[N]othing in the record suggests that defendants' products
are of inferior quality. Accordingly, this factor is entitled to no weight.").95/
Accordingly, the quality factor is neutral.
H.
95/
Consumer Sophistication
In some cases, similarity in the quality of the products can indicate a greater likelihood of
confusion. See, e.g., Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 389; Savin Corp. v.
Savin Grp., 391 F.3d 439, 461 (2d Cir. 2004), cert. denied, 546 U.S. 822, 126 S. Ct. 116
(2005); J.T. Colby & Co. v. Apple Inc., 2013 WL 1903883 at *25. Assuming, arguendo, that
the evidence established that the products were of comparable quality, this would not affect
the neutrality of this factor here, since the parties' products are dissimilar and lack
competitive proximity. See, e.g., Savin Corp. v. Savin Grp., 391 F.3d at 461 ("[A]s
Defendants' services were 'not closely similar to those provided by [P]laintiff,' any
equivalence in 'quality between their products [was] unlikely to cause confusion.'"); O'Keefe
v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 525 (S.D.N.Y. 2008) ("[T]here
is no competitive proximity between [plaintiff's] advertising and design services on the one
hand and [defendant's] credit card and related services on the other. Therefore, regardless
of whether [plaintiff's] products are of equal quality to [defendant's], this factor favors
neither party.").
59
"Our analysis of consumer sophistication 'consider[s] the general impression of the
ordinary purchaser, buying under the normally prevalent conditions of the market and giving the
attention such purchasers usually give in buying that class of goods.'" Star Indus., Inc. v. Bacardi
& Co., 412 F.3d 373, 390 (2d Cir. 2005), cert. denied, 547 U.S. 1019, 126 S. Ct. 1570 (2006).96/ "A
sophisticated consumer is less likely to be confused by similar marks than is a casual shopper." J.T.
Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *25 (S.D.N.Y. May 8, 2013).97/
"Consumer sophistication may be proved by direct evidence such as expert opinions or surveys. In
addition, in some cases a court is entitled to reach a conclusion about consumer sophistication based
solely on the nature of the product or its price." Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 390;
see, e.g., Savin Corp. v. Savin Grp., 391 F.3d at 461-62 (no error in district court's findings that were
"somewhat in the nature of 'common sense' assumptions"). The relevant consumers for this analysis
are those who purchase Denimafia's products. See, e.g., Sterling Drug, Inc. v. Bayer AG, 14 F.3d
733, 742 (2d Cir. 1994) ("This case primarily involves reverse confusion, where consumers mistake
[plaintiff's] products as originating with [defendant]. In such a case, the consumers relevant to the
purchaser sophistication inquiry are those who purchase [plaintiff's] products.").
96/
See, e.g., Savin Corp. v. Savin Grp., 391 F.3d 439, 461 (2d Cir. 2004) ("[T]he pertinent
question is whether 'numerous ordinary prudent purchasers' would likely 'be misled or
confused as to the source of the product in question because of the entrance in the
marketplace of [Defendants'] mark.'"), cert. denied, 546 U.S. 822, 126 S. Ct. 116 (2005);
First Nat'l Bank of Omaha, Inc. v. Mastercard Int'l Inc., 02 Civ. 3691, 03 Civ. 707, 2004 WL
1575396 at *11 (S.D.N.Y. July 15, 2004).
97/
See, e.g., Sly Magazine, LLC v. Weider Publ'ns L.L.C., 346 F. App'x 721, 723 (2d Cir.
2009) ("As for the sophistication of customers, 'the more sophisticated the purchaser, the less
likely he or she will be confused by the presence of similar marks in the marketplace.'");
Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App'x 615, 620 (2d Cir. 2008); Savin Corp. v.
Savin Grp., 391 F.3d at 461; Medici Classics Prods., LLC v. Medici Grp., LLC, 683 F. Supp.
2d 304, 314 (S.D.N.Y. 2010); Restatement (Third) of Unfair Competition § 21 cmt. h (1995).
60
New Balance asserts "that the relevant consumers in this case are unusually highly
sophisticated," relying on Professor Handley's expert report as well as Denimafia's witnesses'
statements attesting to the sophistication of its consumers.98/
In view of the uncontroverted evidence establishing Denimafia's consumers'
sophistication, no reasonable juror could conclude that such purchasers are likely to be confused.
See, e.g., Star Indus., Inc. v. Bacardi & Co., 412 F.3d at 390; J.T. Colby & Co. v. Apple Inc., 2013
WL 1903883 at *25; Medici Classics Prods., LLC v. Medici Grp., LLC, 683 F. Supp. 2d at 314;
Sunenblick v. Harrell, 895 F. Supp. 616, 634 (S.D.N.Y. 1995), aff'd, 101 F.3d 684 (2d Cir.), cert.
denied, 519 U.S. 964, 117 S. Ct. 386 (1996).99/
This is particularly true where, as here, there is minimal similarity between the
parties' products, and the only way consumers can purchase Denimafia's products is by navigating
to its website and making a personal inquiry about placing a prospective order. See, e.g., O'Keefe
v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 525 (S.D.N.Y. 2008) ("Although it is
98/
Dkt. No. 88: Defs. Br. at 18-19; Dkt. No. 89: Defs. Rule 56.1 Stmt. ¶¶ 63-66; Dkt. No. 90:
Edelman Aff. Ex. 1: Rucci Dep. at 251 (Denimafia's customers "tend to be very well
educated about jeans products"); Edelman Aff. Ex. 29: Blundell Dep. at 53, 56-57
(Denimafia's customers are "specialist[s]," not "the average person"); Edelman Aff. Ex. 30:
Blomquist Dep. at 67 ("Q. Would you characterize them as sophisticated customers? A.
Yes, at -- at that time, yes."); Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶¶
43-46, 50; see also Dkt. No. 106: Rucci Aff. ¶ 72. Denimafia does not dispute that its
consumers are highly sophisticated. See Dkt. No. 115: Defs. Reply Br. at 8; see generally
Dkt. No. 103: Denimafia Opp. Br.; Dkt. No. 108: Denimafia Rule 56.1 Counter-Stmt.
99/
The result would not change if the retailers were considered as the relevant consumers.
(Defs. Br. at 19 n.18; Edelman Aff. Ex. 31: Handley Aff. Ex. 1: Handley Report ¶ 49.) See,
e.g., W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 576 (2d Cir. 1993) ("Retailers are
assumed to be more sophisticated buyers and thus less prone to confusion."); J.T. Colby &
Co. v. Apple Inc., 2013 WL 1903883 at *25; Restatement (Third) of Unfair Competition §
21 cmt. h ("It is generally thought that professional purchasers are more discerning and less
easily confused than casual purchasers, and that most purchasers exercise greater care when
buying expensive items . . . .").
61
true that 'when . . . there is a high degree of similarity between the parties' services and marks, the
sophistication of the buyers cannot be relied on to prevent confusion,' there is no similarity between
the parties services or marks in this case. This factor weighs in [defendant's] favor." (citation
omitted)); Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 495-96 (S.D.N.Y. 2004)
("[S]hoppers on the Internet, who seek to purchase either party's products, are relatively
sophisticated and will not suffer confusion when they search for these products on the web. The
consumer is not shopping for a fungible good—6–inch round, laser discs. Typically, he or she is
searching for an artist's composition or performance. . . . 'Internet shoppers have a specific product
in mind when they go online and have the ability to navigate the Internet to get what they want.'").100/
Accordingly, the consumer sophistication factor weighs in New Balance's favor.
I.
Balancing the Polaroid Factors
The Court concludes that Denimafia has failed to raise an issue of fact as to the
likelihood of confusion. Even if the weakness of the mark (first factor) was held to weigh against
New Balance because this is a reverse confusion case (see page 33 n.58 above), and even if New
Balance's survey evidence of lack of confusion (fifth factor) was discounted and found to weigh only
slightly in New Balance's favor (see page 52 n.85 above), four of the remaining six
factors—similarity of the marks (second factor), competitive proximity (third factor), bridging the
gap (fourth factor), and consumer sophistication (eighth factor)—all weigh in New Balance's favor,
and the intent (sixth factor) and quality of the products (seventh factor) are neutral. Accordingly,
100/
See also, e.g., YouGottaEat, Inc. v. Checkers Drive-In Rests., Inc., 81 F. App'x 392, 395 (2d
Cir. 2003) ("parties do not share the same customer base" where defendant's consumers seek
products for immediate purchase and plaintiff's consumers "are people who go online,
research restaurants and print discount coupons to be used at a later time"); Medici Classics
Prods., LLC v. Medici Grp., LLC, 683 F. Supp. 2d at 314 ("[I]nternet shoppers are even less
likely to suffer confusion over similar label marks because they are typically 'searching for
an artist's composition or performance.'").
62
the Court finds that no reasonable juror could conclude that the overall balancing of the Polaroid
factors weighs in Denimafia's favor. See, e.g., Sly Magazine, LLC v. Weider Publ'ns L.L.C., 346
F. App'x 721, 723 (2d Cir. 2009) ("Notwithstanding that we find that two Polaroid factors—'quality
of product' and 'sophistication of customers'—should be considered as neutral in the Polaroid
analysis, that fact does not affect our analysis of the six remaining factors, all of which weigh in the
Defendants' favor. We agree with the district court, therefore, that the overall balancing of the
Polaroid factors does weigh in favor of the Defendants. For that reason, we affirm the grant of
summary judgment in favor of the Defendants with respect to the Lanham Act claims."); Savin
Corp. v. Savin Grp., 391 F.3d 439, 462 (2d Cir. 2004) ("[O]ne of the Polaroid factors—similarity
of marks—weighs in Plaintiff's favor, while the other factors weigh in favor of Defendants. . . . [W]e
find nothing to quarrel with in the District Court's . . . ultimate conclusion that that [Lanham Act
infringement] claim cannot survive summary judgment. In sum, Plaintiff 'has not at this point
demonstrated a likelihood of confusion.'"), cert. denied, 546 U.S. 822, 126 S. Ct. 116 (2005);
Gameologist Grp., LLC v. Scientific Games Int'l, Inc., 838 F. Supp. 2d 141, 164 (S.D.N.Y. 2011)
("[T]he strength of the mark and the good faith of the defendants are at best neutral for the plaintiff.
The quality of the defendants' mark is also neutral. However, the rest of the factors weigh heavily
against the plaintiff. . . . Consequently, the plaintiff has failed to raise a genuine issue of material
fact as to likelihood of confusion and the defendants' motion for summary judgment dismissing the
plaintiff's Lanham Act trademark infringement claim and false designation of origin and unfair
competition claim is granted."), aff'd, 508 F. App'x 31 (2d Cir. 2013); THOIP v. Walt Disney Co.,
788 F. Supp. 2d 168, 191 (S.D.N.Y. 2011) ("The (1) competitive proximity and (2) similar quality
of the shirts at issue in this case and the (3) strength of [defendant's] mark weigh slightly in
[plaintiff's] favor on the issue of reverse confusion. Had [plaintiff] submitted strong (probative and
63
reliable) survey evidence of reverse confusion, I would conclude that a reasonable juror could find
reverse confusion. However, in light of (4) the lack of (probative and reliable) survey evidence
suggestive of actual reverse confusion, (5) [defendant's] lack of bad faith, and (6) the lack of
(non-hypothetical) evidence that the [defendant's products] are likely to overwhelm [plaintiff's]
mark, I conclude that no reasonable juror could find reverse confusion."); O'Keefe v. Ogilvy &
Mather Worldwide, Inc., 590 F. Supp. 2d 500, 526 (S.D.N.Y. 2008); see also page 25 n.47 above.
New Balance is granted summary judgment on all claims.101/
101/
All of Denimafia's claims are defeated by the Court's determinations in the trademark
infringement analysis. (See Dkt. No. 88: Defs. Br. at 10 n.8.) See, e.g., Sly Magazine, LLC
v. Weider Publ'ns L.L.C., 346 F. App'x at 723 ("To prevail on a New York unfair
competition claim, a plaintiff must show either actual confusion or a likelihood of confusion,
and there must be 'some showing of bad faith' on the part of the defendants. Because the
Plaintiff failed to raise a genuine issue of material fact concerning bad faith, the district
court's dismissal of the Plaintiff's state law unfair competition claim is affirmed." (citation
omitted)); J.T. Colby & Co. v. Apple Inc., 11 Civ. 4060, 2013 WL 1903883 at *26 (S.D.N.Y.
May 8, 2013); Kate Spade LLC v. Saturdays Surf LLC, 950 F. Supp. 2d 639, 648 (S.D.N.Y.
2013) ("The elements of the New York State infringement claim are essentially the same as
those under the Lanham Act. Similarly, the New York State claims of unfair competition
and misappropriation require a showing of actual confusion or likelihood of confusion, and
the additional element of bad faith. Because the elements of the state law claims mirror the
elements of the federal claims, I find in favor of [counterclaim-defendant] on those claims
as well." (citations omitted)).
64
CONCLUSION
For the reasons set forth above, New Balance's motion for summary judgment (Dkt.
No. 87) is GRANTED. New Balance is to advise the Court by March 10, 2014 whether it
voluntarily withdraws its counterclaims, which would moot Denimafia's cross-motion (Dkt. No. 91).
(See page 2 n.2 above.)
SO ORDERED.
Dated:
New York, New York
March 3, 2014
_______________________________
Andrew J. Peck
United States Magistrate Judge
Copies ECF to: All Counsel
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?