Can't Live Without It, LLC d/b/a S'well Bottle v. ETS Express, Inc.

Filing 77

OPINION AND ORDER re: 52 MOTION for Partial Summary Judgment . filed by Can't Live Without It, LLC, 56 MOTION for Summary Judgment . filed by ETS Express, Inc. Defendant's motion for summary judgment is grant ed dismissing plaintiff's second, fifth, and sixth causes of action (false designation of origin and unfair competition in violation of the Lanham Act, deceptive acts and practices in violation of New York General Business law § 349, and fa lse advertising in violation of New York General Business Law § 350), but is otherwise denied, and plaintiff's motion for summary judgment is denied in its entirety. The Clerk of Court is ordered to close documents numbered 52 and 56 on the docket. SO ORDERED. (Signed by Judge Jed S. Rakoff on 1/15/18) (yv)

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CAN' T LIVE WITHOUT IT, LLC D/B/A
S'WELL BOTTLE,
17-cv-3506 (JSR)
Plaintiff,
OPINION AND ORDER
-v-

ETS EXPRESS,

INC.,

Defendant.

-----------------------------------------x
JED S. RAKOFF, U.S.D.J.
Plaintiff Can't Live Without It,
six

claims

against

defendant

ETS

LLC

("S'well")

Express,

Inc.

has brought
("ETS").

ETS

manufactures the Force and Swig Bottles, which have the exact same
shape as plaintiff's S'well and S' ip Bottles,
has

moved

claims:
Act;

(2)

for

(1)

summary

judgment dismissing

false

six

of

S'well' s

designation of origin and unfair competition in

New York common law;
(5)

all

ETS

trade dress infringement in violation of the Lanham

violation of the Lanham Act;

law;

respectively.

(3)

trade dress

infringement under

(4) unfair competition under New York common

deceptive acts and practices

General Business law

§

of New York General

Business Law

in violation of New York

349, and (6) false advertising in violation
§

350.

ETS has also moved for

summary judgment on its counterclaim seeking cancellation of the
trade dress registrations for the S'well and S' ip Bottles. S'well,
in turn,

ha.s moved for summary judgment as to liability on its

1

second and fourth claims,

but only with regard to ETS's alleged

use of S'well's trademarked name, not S'well's trade dress rights.
For the reasons set forth below, the Court grants defendant's
motion for

summary judgment dismissing plaintiff's second claim

(false designation of origin and unfair competition in violation
of the Lanham Act),

fifth claim (deceptive acts and practices in

violation of New York General Business law

§

349), and sixth claim

(false advertising in violation of New York General Business Law
§

350). The Court otherwise denies defendant's motions,

and also

denies plaintiff's motion.
The

relevant

facts,

undisputed except where noted,

are as

follows:
S'well was founded in 2010 by Sarah Kauss,
CEO.

Defendant ETS Express,

who remains its

Inc.'s Response to Plaintiff's Rule

56.1 Statement of Purported Undisputed Facts ("ETS 56.1 Resp.")

~

1, ECF No. 65. S'well manufactures water bottles and holds various
trademarks registered with the United States Patent and Trademark
Office

("PTO"),

including for the words "S'well" and "Swell," as

well as the stylized mark
S'well' s

S'well.

signature product

is
~

which came to market in 2010, id.
"S'well" mark printed on their
Counterstatement
Facts Not

in

to

Dispute

ETS

5.
id.

~

2,

9. All S'well Bottles have the
Plaintiff's Response

Inc.' s

56.1

2

~

the S'well Bottle,

sides.

Express,

("S'well

Id.

Statement

Resp."),

~

44,

of

and

Material

ECF No.

69.

S'well

registered

dimensional

the

shape

S'well

and

Bottle's

cap,

in

trade

dress

combination)

(its

with

threePTO

the

Supplemental Register in July 2013 and the PTO Principal Register
in January 2017.

ETS 56.1 Resp.

<JI

6.

S'well has since litigated

against several companies it viewed as having infringed these trade
dress rights.

See Can't Live Without It, LLC d/b/a S'well Bottle

v. RTIC Coolers, LLC, RTIC Drinkware, LLC, RTIC Web Services, LLC,
and John Doe LLCs 1-5, 1:17-cv-03530 (S.D.N.Y. May 11, 2017); Can't
Live Without

It,

Inc.

d/b/a S'well Bottle v.

Shanghai2008

(HK)

Trading Ltd., 1:16-cv-09520 (S.D.N.Y. Dec. 12, 2016).
The

S'well

Bottle

has

substantial amounts of free,
millions

of

bottles

and

been

very

unsolicited media coverage,

an

increasing

generating millions of dollars in income.
18.

S'well

website,
stores,

sells

(b)
and

to
( c)

its bottles
retailers
through

obtaining

successful,

who

(a)

sell

each

year,

ETS 56.1 Resp.

directly

then

S' well' s

number

selling

to

consumers

the

bottles

custom program,

in

and

<JI<JI

13-

on

its

in

their

which

an

imprint of a company's name or logo is added to the bottle and the
company then resells or gives away the bottles.

Id.

<JI

22. S'well

has spent a great deal of money on advertising and marketing its
bottles

and

organizations,

has
trade

collaborated
shows,

with

festivals,

tastemakers to further develop its brand.

3

various
and
Id.

philanthropic

other
<JI

events

and

26. As a result,

S'well is well known compared to other water bottle brands. Id. ~
27.
ETS is a drinkware company that was founded in 1985. S'well
56.1 Resp.

~ 1. ETS has had success selling various kinds of its

own

bottles

water

that

Declaration of Robert

are

"patterned

Penchina

after"

retail

brands.

in Support of Plaintiff's Motion

for Summary Judgment dated November 20,

2017

("Penchina Deel."),

ECF No. 49, Ex. 6, Deposition of Adam Stone ("Stone Dep.") 101:2302:2. The Force Bottle is one of ETS's most popular products and
is shaped identically to the S'well Bottle. ETS 56.l Resp. ~~ 3234.

ETS first placed a

2014.

~

Id.

57.

ETS

factory order for a

characterizes

Force Bottle in May

itself

as

operating

in

the

"promotion products market" rather than the retail market, meaning
it

fulfills

products

orders

and

the

placed by

intermediaries

intermediaries

then

sell

for

those

businesses that give them away as promotions. Id.
intermediaries
specialize
directly

sell

a

wide

in drinkware.
to

bookstores
California.

some

and
Id.

a

~

44.

47.

shop

of

ETS does

chain

Additionally,

with
some

products

~~

sell
at

to

42-43. These

products

including,

retailers
coffee

~

Id.

variety

custom-printed

and

do

not

Force Bottles

least,

locations

college

throughout

distributors

sell

to

retailers who sell Force Bottles to end-users either online or in
retail stores. Id.; Penchina Deel., Ex. 23.

4

Summary Judgment

is

appropriate

if

the

"movant

shows

that

there is no genuine dispute as to any material fact." Fed. R. Civ.
P. 56(a). There is no genuine dispute if, "drawing all reasonable
inferences in favor of a non-movant,
could

find

St ates ,

in

favor

of

9 96 F . 2d 145 5 ,

that

no reasonable trier of fact

party."

Heublein,

Inc.

v.

United

14 6 1 ( 2 d C 1 r . 1 9 9 3 ) . A fact i s material i f

it "might affect the outcome of the suit under the governing law."
Anderson v.

Liberty Lobby,

Inc.,

477 U.S.

242,

248

(1986).

"The

movant bears the burden of showing that there is no genuine dispute
of material fact." Id. at 256.
I.

Trade Dress Violation under the Lanham Act (First Cause of
Action) and under New York Common Law (Third Cause of Action) .
Defendant's Counterclaim for Cancelation.

Section 32 of the Lanham Act,

in relevant part, holds liable

any person who "use[s] in commerce any reproduction, counterfeit,
copy,

or colorable imitation of a

registered mark in connection

with the sale, offering for sale, distribution, or advertising of
any goods" when "such use is likely to cause confusion, or to cause
mistake, or to deceive." 15 U.S.C.

§

1114(1) (a) . 1 "[T]o succeed in

a Lanham Act suit for trademark infringement, a plaintiff has two
obstacles to overcome:

the plaintiff must prove that its mark is

Before 1962, an alleged infringer's use of its mark in commerce
had to be likely to deceive "purchasers as to the source of
origin of such goods or services," but that portion was then
deleted "since the provision actually relates to potential
purchasers as well as to actual purchasers." S. Rep. No. 87-2107
(1962), as reprinted in 1962 U.S.S.C.A.N. 2844, 2847.
1

5

entitled

to

protection

and,

even

more

important,

that

the

defendant's use of its own mark will likely cause confusion with
plaintiff's mark." Gruner+ Jahr USA Pub., a Div. of Gruner+ Jahr
Printing

Pub.

&

Co.

v.

Meredith Corp.,

991

F.2d 1072,

1074

(2d

Cir. 1993). "The analysis for trade dress infringement is the same
under both the Lanham Act and New York State common law." Sports
Traveler,
2d 154,

Inc.

Inc.,

25 F. Supp.

(S.D.N.Y. 1998).

166

A.

v. Advance Magazine Publishers,

Validity of the Trademark and Defendant's Counterclaim
for Cancelation

The Lanham Act only protects nonfunctional, distinctive trade
dress. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775
(1992). If the trade dress is either functional or not distinctive,
then cancelation of the mark is appropriate. See 15 USC§ 1064(3)
(authorizing

cancelation

"if

the

registered

mark

becomes

the

generic name for the goods or services, or a portion thereof, for
which

it

is

presumptively

registered,

or

distinctive

is

functional").

and

S'well's

nonfunctional

registered with the PTO. See 15 U.S.C.

§

1057(b)

because

mark

is

it

is

("A certificate

of registration of a mark upon the principal register provided by
this chapter shall be prima facie evidence of the validity of the
registered

mark") .

"As

a

result,

when

a

plaintiff

sues

for

infringement of its registered mark, the defendant bears the burden
to

rebut

the

presumption

of

[the]

6

mark's

protect ibil l t y

by

a

preponderance of the evidence." Lane Capital Mgmt.,
Cap i t a l Mgmt . ,

v.

Lane

Inc . , 1 9 2 F . 3 d 3 3 7 , 3 4 5 ( 2 d C i r . 1 9 9 9 ) .

"[P]roduct-design

trade

dress

distinctive," as product design,
always

Inc.

serves

a

function

can

never

be

inherently

such as the shape of a bottle,

beyond

identifying

the

source

of

the

product. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 21415

(2000).

To become distinctive,

must acquire a secondary meaning.

a

product

design trade dress

Id. Trade dress has a secondary

meaning if, "in the minds of the public, the primary significance
of

a

product

product
Ives

feature

rather

Labs.,

than

Inc.,

or term is
the product

456 U.S.

to

identify the

itself."

844,

851

source of

Inwood Labs.,

n.11

(1982).

Inc.

the
v.

In evaluating

this issue, courts look to such factors, inter alia, as advertising
expenditures,
coverage,

consumer studies,

attempts

to

sales success,

plagiarize

the

unsolicited media

mark,

and

length

and

exclusivity of the mark's use. Bristol-Myers Squibb Co. v. McNeilP.P.C.,

Inc.,

Here,

973 F.2d 1033, 1041

defendant's

(2d Cir. 1992).

sole argument

against distinctiveness

is

that consumers cannot possibly associate the bottle shape here at
issue with any single source because so many different businesses
manufacture

similarly shaped bot t 1 es.

ETS prov ides declarations

from various employees who state that they purchased S'well-like
bottles

from

descriptions,

various
and

stores

receipts.

and
See

7

websites,
Defendant

providing
ETS

pictures,

Express,

Inc.'s

Local Rule 56.1 Statement of Material Facts Not in Dispute
56.1

Stmt.''),

'll'll

23-25,

42,

ECF

No.

47.

ETS

("ETS

identifies

130

different sources of water bottles that have the same shape as the
S'well Bottle.
Defendant

posits

that,

as

a

matter

of

number of such different sources exceeds 20,

law,

if

"the

total

the alleged mark is

generic because it cannot indicate that it emanates from a single
source." ETS Express,

Inc.'s Memorandum of Law in Support of Its

Motion for Summary Judgment
such numeric rule exists.
large

market

share

and

("ETS Mem.")

If,

at 5, ECF No. 57. But no

for example,

strong

brand

one source has such a

awareness

that

the

public

strongly associates its mark with that brand, consumers will likely
assume that products bearing that mark are associated with that
brand,
number

regardless of the number of "knockoff" manufacturers.
of

manufacturers

determinative factor.

is

therefore

a

relevant,

but

The
not

2

2

The cases ETS cites do not support the hard rule it suggests.
In EFS Marketing, Inc. v. Russ Berrie & Co., the defendant did
not "contend that its troll dolls had acquired distinctiveness
through secondary meaning," which would have been a tall order
because the dolls were "virtually indistinguishable" from a
"public domain doll." 76 F.3d 487, 490-91 (2d Cir. 1996). ln
Mana Prod., Inc. v. Columbia Cosmetics Mfg., Inc., a cosmetic
company sought trademark protection for its compact cases
because they were black, but it adduced no evidence of secondary
meaning beyond advertising expenses and one declaration from one
customer. 65 F.3d 1063, 1071 (2d Cir. 1995). This evidence was
particularly insufficient because "black is as common a color
for a makeup case as brown is for a paper bag." Id. In Malaco
Leaf, AB v. Promotion In Motion, Inc., the Court held that
8

While ETS, in its motion seeking summary judgment dismissing
S'well's first and third claims largely relies on a
statistical

rule,

S'well,

by

contrast,

submits

non-exis~ent

substantial

evidence suggesting that the public in fact does associate this
particular shape with S'well,

including undisputed,

significant

levels of advertising expenditures, sales success, and unsolicited
media coverage. ETS 56.1 Resp.

~~

13-20. Moreover, ETS salespeople

in emails with distributors themselves referred to the Force Bottle
as a "S'well knockoff," Penchina Deel. Exs.
option," Declaration of Paul J.
Opposition
December 4,

to

2017

like," id., Ex.
16.

Defendant's

11, 12; a "swell like

Safier in Support of Plaintiff's

Motion

("Safier Deel."),

for

Summary

ECF No.

62,

Judgment
Ex.

14;

dated

"S'well-

15; and "the ones that look like Swell," id., Ex.

Online retailers have similarly advertised Force Bottles to

the public as being similar to S'well Bottles. See id., Exs. 20,
21. These comparisons would be meaningless if the audience did not
associate the shape with the brand. See Cartier, Inc. v. Four Star
Jewelry Creations,

Inc., 348 F. Supp. 2d 217, 231

(use of "such terms as 'Cartier style,'
style'"

to

advertise

watches

(S.D.N.Y. 2004)

'Tank style' or 'Panthere

supported

finding

of

secondary

"evidence of extensive third-party use supports a finding that
the Swedish Fish design is generic," but also that "fish-shaped
candies were among the top four shapes sold in the gummy
industry in the late 1990s," and that the plaintiff had not
policed its trade dress rights for decades. 287 F. Supp. 2d 355,
364 (S.D.N.Y. 2003).

9

meaning)

Thus,

whether S' we 11' s

at

a

minimum,

trade dress

a

genuine

has

dispute

acquired a

exists

as

to

secondary meaning,

thereby precluding summary judgment in ETS's favor on this issue.
Product

design

with

a

secondary

meaning

is

nonetheless

insufficient to sustain plaintiff's first and third claims if the
protected design

is

purpose

identification

beyond

marketable,

functional,

i.e. ,

of

if

it

source

serves
and

some useful

there

are

no

alternative designs that would achieve the same end.

See Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142,
1148 (2d Cir. 1987). The Latham Act is meant to protect consumers
from

confusion,

items.

not

to

permit

See Qualitex Co.

v.

monopoly

pricing

Jacobson Prods.

Co.,

for

functional

Inc.,

514 U.S.

159, 164-65 (1995).
ETS

argues

that

the

registered configurations

of both the

S'well and S' ip Bottles are functional because they are "the most
efficient container shape[s] from which to drink." ETS Mem. at 10.
ETS cites material S'well itself submitted to the PTO in support
of its registrations to argue that both bottles contain "mouths"
that are big enough for ice cubes but small enough for "drip-free
sipping" and are located in the center of the bottle,
never need to rotate the bottle to begin drinking.

so users

Id. at 10-11.

ETS also asserts that the circular shape is the "strongest and the
easiest

to

make,"

and

that

the

bottles'

smooth

relatively shallow angle from the base to the

10

tapering

~outh

at

a

permits the

bottles to be emptied completely with relatively minor tilts.
at

11-12.

The alternative design -

straight

sides with a

Id.

sharp

angle Just before the mouth - creates a "catch basin," so that the
liquid in the bottle, rather than smoothly flowing out, is trapped
in

the

depression where

tilted further,

the

angle

changes

the bottle

is

at which point it comes rushing out all at once,

leading to spills and other dangers.
ETS,

until

however,

Id. at 12-13.

cites no evidence in the section of its brief

making these assertions,

and that by itself is enough to defeat

these assertions for purposes of a summary Judgment motion. Several
propositions

on

evident.

states

ETS

which

they

rely,

moreover,

that manufacturing a

are

far

from

circular shape

selfis

the

easiest and cheapest option, but a rectangular shape might likely
be easier to stack and ship.
Co.,

971

F.2d

6,

20

Cf. Abbott Labs.

(7th Cir.

1992)

v.

Mead Johnson &

(nail

polish manufacturer

arguing that square container was functional

for these reasons).

The founder of S'well also said in her declaration that she made
several aesthetic choices when she designed the bottles that she
knew would be more
December 4, 2017

~

expensive.
5, ECF No.

Declaration of

Sarah Kauss

dated

63.

Furthermore, ETS offers no evidence suggesting that no other
designs could have these same functional benefits. S'well has not
trademarked all water bottles with gently sloping sides.

Indeed,

ETS's argument that both the S'ip and S'Well Bottles have ideal

11

shapes,

despite the two being shaped differently,

suggests that

these benefits may be available in other shapes as well. And ETS
says nothing about the distinctive bottle cap,

which is part of

S'well's trade dress. Nor is it clear that S'well and S'ip Bottles
have achieved the perfect mouth size.

(How many ice cubes will not

fit a smaller bottle mouth? How much more spilling does a bigger
bottle mouth risk?)
To

be

sure,

container

shapes

are

"society is better served if functional

often

functional,

containers

and

remain

available for use among competitors. To the extent this causes a
modicum of confusion of the public,
Water Gremlin Co.,
not

offered

instant

it will be tolerated." In re

635 F.2d 841, 844

sufficient

combination

evidence

of

design

to

(C.C.P.A. 1980). But ETS has
show

that

elements

the

serves

function
is

the

otherwise

unavailable.
Although
whether

the

S'well's

genuine
trade

dispute

dress

that

rights

therefore

are

exists

distinctive

and

as

to

non-

functional is insufficient in itself to end the inquiry regarding
defendant's motion for summary judgment on plaintiff's first and
third causes of action (see the next section), it is sufficient to
deny defendant's motion for summary judgment on its counterclaim
seeking cancelation of plaintiff's marks. That motion is therefore
denied.

12

B.

Likelihood of Confusion

Even

if

its

mark

is

valid,

a

plaintiff

cannot

succeed

on

claims of infringement under the Lanham Act or parallel New York
State law unless the defendant's use of
confusion.

The

Court

therefore

the mark tends to cause

considers

whether

customers

potential customers who see the allegedly infringing product

or
(the

Force Bottle)

are likely to either confuse it with the protected

product

S'well

(the

associated with
likely

to

circuit

Force

confuse

examine

Bottle)
Bott le.

consumers

the

eight

Friendly in Polaroid Corp.
(2d Cir.

or

believe

S'well

In deciding whether
about

factors
v.

that

its

origins,

famously

Polarad Elecs.

is

a

somehow

product

courts

in

enumerated by
Corp.,

is

this
Judge

287 F.2d 492

1961):
( 1 ) st re n gt h o f the pl a i n t i f f ' s ma r k ; ( 2 ) the
degree of similarity between the two marks;
(3) the proximity of the products; (4) the
likelihood that the prior owner will "bridge
the gap" .
. , ( 5) actual confusion; ( 6) the
defendant's good faith in adopting its mark;
(7) the quality of defendant's product; and
(8) the sophistication of the buyers.

Cadbury Beverages,
1996).

"If

a

Inc.

factual

v.

Cott Corp.,

inference

must

73 F.3d 474,

478

be

arrive

drawn

to

(2d Cir.
at

a

particular finding on a Polaroid factor, and if a reasonable trier
of fact could reach a different conclusion, the district court may
not properly resolve that issue on summary Judgment." Id.

13

As discussed above,
that

it s

ma r k i s

many

other

S'well has adduced significant evidence

di s t inc t iv e

manufacturers

and s t r on g ,

make

similar

des p i t e

the
And

bottles.

concedes that the two products are very similar.

fact

defendant

ETS Mem.

that

at 6.

These first two critical factors therefore weigh against granting
defendant's motion.
ETS's principal argument is that S'well's claim fails on the
third and eighth Polaroid factors. According to ETS, Force Bottles
and S'well Bottles are sold in separate markets to sophisticated
consumers who would not confuse them.

ETS submits a declaration

from an expert who opines that distributors that purchase Force
Bottles from ETS and the businesses that order those bottles from
the distributors
they

purchase.

are

unlikely to be

Declaration

Defendant ETS Express,
November 20,
Jacoby,

2017

analysis

Michael

("Carwin Deel."), Ex.
~~

in

Support

of

Summary Judgment dated

9 Expert Report of Jacoby

this report involved no empirical research or data

and

(asserting that
more

the bottles

22-25.

consists

largely

masquerading as expert opinions.

much

Carwin

W.

Inc.' s Motion for

Ph.D. ("Jacoby Rep.")

However,

of

confused about

"'unit price'

important

decision

of
See,

unsupported
~,

Jacoby Rep.

of the bottles
factor

for

speculation

is

~

25 (b)

likely to be a

buyers

at

End

User

Companies than is 'source'."). Plaintiff, by contrast, has adduced
evidence of distributors specifically requesting "S'well Bottles"

14

from ETS,

which appeared to

fill

the orders with Force Bottles

without correction. See, e.g., Penchina Deel. Ex. 41. A reasonable
juror

could

therefore

Furthermore,
extent,

in

disagree

with

the

conclusions.

ETS and S'well undisputedly do participate,
the

same

markets.

Specifically,

business is in the promotional market.
ETS

expert's

sells

directly

to

at

least

10-15%

of

ETS 56.1 Stmt.

some

to some

retailers

S'well' s
~

21. And

and

some

distributors, who then sell Force Bottles to retailers or directly
to end-users online. ETS 56.1 Resp.

~

47.3

ETS also ignores the possibility of post-sale confusion among
the end-consumers of Force Bottles. See Jacoby Rep.

~

22 (assuming
4

that only the confusion of immediate buyers is relevant)

''

[E)ven

if the direct purchaser of these goods were unlikely to confuse
the

source

channels

of

confusion as

of

the

product

trade,

this

to

source

the

because

does
of

of

nothing

the
to

the goods."

clearly

delineated

alleviate

post-sale

T.

Anthony,

Ltd.

3

v.

S'well claims that it is working to "bridge the gap" by
expanding its presence in the promotions market, but it provides
no evidence to support this contention. Memorandum of Law in
Opposition to Defendant's Motion for Summary Judgment at 16-17,
ECF No. 60. The fourth Polaroid factor therefore weighs in favor
of ETS. This factor matters less, however, where there is
already significant overlap between the parties' markets.
4

Neither party has put forth any argument regarding whether
"potential purchasers would be misled into an initial interest"
in Force Bottles, which would suffice to work a trademark
injury. Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d
254, 260 (2d Cir. 1987). The Court has therefore not considered
this possibility.
15

Malletier,

No.

2 4,

It does not matter if the confused customers a re not

19 93) .

93-cv-6900,

1993 WL 659682,

at

purchasing directly from the alleged infringer.
v.

Lederer de Paris Fifth Ave.,

2000)

(recognizing

post-sale

because, among other reasons,

Inc.,

*3

(S.D.N.Y.

See Hermes Int'l

219 F. 3d 104,

confusion

under

Nov.

108

the

(2d Cir.

Lanham

Act

"the public may be deceived in the

resale market if it requires expertise to distinguish between an
original and a knockoff"). Nor does it matter, as ETS argues, that
the

two bottles are of

where,

as here,

the

same physical

quality,

particularly

there is evidence that they are not of the same

expressive quality. See, e.g., Declaration of Sarah M. Kauss dated
November 19, 2017, ECF No. 55, Ex. B3 (magazine article describing
S'well

Bottles as

"suddenly a

feverish must-be-associated-with-

thing among a certain stylish, in-the-know set"). The purchase of
one product under the mistaken belief that it is another product
is a prototypical harm against which the Lanham Act protects.
S'well
downstream

has

also

confusion.

pointed
At

to

least

several

one

retailer

Bottles as nswell Bottles" on its shelves,
29,

examples

of

mislabeled

actual
Force

Safier Deel. Exs.

28-

and several consumers have contacted S'well customer service

in the mistaken belief that they had S'well Bottles, when in fact
they had Force Bottles or,

perhaps,

16

similar bottles

i:rom other

brands, Penchina Deel. Exs. 51-53.

5

S'well also submitted a report

from an expert who conducted an internet survey that shows that
59% of S'well's target demographic of stainless steel water bottles -

female potential purchasers
associate the shape at issue

with S'well. Safier Deel. Ex. 22, Expert Report of Robert L. Klein
at 14. This expert also calculated an overall net confusion rate
of 26.6% between the S'well and Force Bottles.

Id.

at 29-30. ETS

does not address this expert's findings. And even if it had,
Court,
in

the

the

on summary judgment, must draw every reasonable inference
non-moving

party's

favor.

For

purposes

of

defendant's

motion, the fifth Polaroid factor therefore favors S'well.
The sixth Polaroid factor is "whether the defendant adopted
its

mark

reputation

with
and

the

intention
and

capitalizing

between

plaintiff's
the

senior user's product." Lang v. Ret. Living Publ'g Co., Inc.,

949

(2d Cir. 1991)

any confusion

on

and

F.2d 576, 583

goodwill

of

his

(citation omitted). ETS asserts that

it did not know about S'well or the S'well Bottle when it decided
to make the Force Bottle. ETS 56.1 Resp.

~

58. According to ETS's

CEO, ETS decided to make the Force Bottle "in response to requests
from its distributors who requested that ETS supply them with a

s While an argument might be made that these items are

inadmissible hearsay, ETS, in its otherwise exhaustive response
to S'well's 56.1 Statement, failed to object to them on this
ground. See ETS 56.1 Resp. ~~ 47; 71. Moreover, even if the
Court were to disregard these items, that would not materially
alter any of the Court's conclusions herein.
17

cola type bottle that was being supplied by competitors of ETS,"
and ETS only learned about S'well after it began doing research
about such a bottle.
of ETS Express,

Declaration of Michael W.

Carwin in Support

Inc.' s Opposition to Plaintiff's Partial Motion

for Summary Judgment dated December 4, 2017 ("Carwin Opp. Deel."),
ECF No. 66, Ex. 21, Declaration of Sharon Eyal

~

2. Given, however,

the many years of the S'well Bottle's prominent existence before
ETS decided to make the Force Bottle, the credibility of the CEO's
assertion is still a genuine and disputed issue.
Moreover, even if ETS initially decided to make a "cola type
bottle" before it knew about S'well,
that,

the evidence tends to show

before the Force Bottle was actually made,

the S'well Bottle.

Specifically,

ETS learned of

ETS employee Adam Kovar sent a

list of the available volumes of S'well Bottles to ETS CEO Sharon
Eyal and ETS CFO Taly Eyal

in an email dated May 2,

2014,

before ETS finalized its first order of Force Bottles.

JUSt

Penchina

Deel. Ex. 28. The evidence also tends to show that ETS made changes
to

the

similar

Force Bottle
to

employees
Bottles,

the
of

a

Kovar

for

S'well
factory
told

a

the

express purpose of making

Bottle.
that
factory

S'well bottle/lid you make.

In
makes

a

2015
both

employee,

email
the

it more

exchange

Force

"[P] lease

and
look

with

S'well
at

the

Ours should be equally as defined as

theirs." Penchina Deel. Ex. 30. Sharon Eyal then added, "We really
need to match the lid on the left," referring to the picture of

18

the S'well Bottle. Id. Kovar later distributed a chart to ETS staff
highlighting

changes

and

noting

that

identical to S'well's (lid and base)
ETS

al so

has

a

"Reta i 1

"the

newer

version

is

"Penchina Deel. Ex. 31.

Brands

Guide"

that

compares

its

products to retail products. See Penchina Deel. Ex. 26 (the guide).
Al though ETS contends

at

least

some ETS representatives distributed it to customers.

See,

~'

Stone

testifying

Dep.

this was made

120:13-25

(regional

for

sales

internal

representative

that he "blasted" the guide out to "probably .
hundred plus"
S'well

Bottle,

Bottle

taking

clients).
with
up

This

the

almost

catalog compares

description
the

entire

use,

[a]
the

and picture
page

and

[h] undred,

Force
of

the

to the
S'well

comparably

tiny

pictures of the Force Bottle at the bottom. Penchina Deel. Ex. 26
at 9.

In a deposition,

one ETS salesperson said it was "fair" to

say that ETS tried to "get the distributor to of fer

[customers] a

. S'well" in which the customer

Force as the equivalent to the

was interested because the retail brands "invest in marketing and
create interest." Stone Dep. 161:24-162:7.
There is thus sufficient evidence for a reasonable juror to
find

that

ETS

intentionally made

its

Force Bottle look exactly

like the S'well Bottle because ETS meant to take advantage of the
strength of

S' well' s

mark.

The

sixth

Polaroid factor

militates against granting defendant's motion.

19

the ref ore

The

seventh

factor

is

the

quality of

the

goods.

A marked

difference in quality "tends to reduce the likelihood of confusion
in the first instance, because buyers will be less likely to assume
that

the

senior

user

whose

product

is

high-quality

produced the lesser-quality products of the
Corp.

v.

Savin Grp.,

391 F.3d 439,

461

will

have

junior user." Savin

(2d Cir.

2004).

But,

for

reasons relating to the positions they take on other claims,

the

parties take positions on this seventh factor seemingly at odds
with their interests.

Specifically, ETS argues that the products

are similar (which would make confusion more likely) while S'well
argues

that

confusion
relation

the

less
to

Force

Bottle

likely).

S'well' s

While

is
this

deceptive

claims under New York law,

for

inferior
issue

practices

(which

would

make

is addressed below
and

false

in

advertising

immediate purposes the most that

can be said is that there is no evidence that Force Bottles are
inferior products.
For all the foregoing reasons, consideration of the Polaroid
factors demonstrates that there is, at a minimum, a genuine dispute
regarding

whether

purchasers

will

it

is

1 i kel y

confuse

Force

Defendant's motion for
trade dress

sum.~ary

infringement

that

purchasers

Bottles

for

and

S'well

potent ia 1
Bottles.

judgment on plaintiff's claims for

in violation of the Lanham Act and New

York common law is therefore denied.

20

II.

Deceptive Acts and Practices (Fifth Cause of Action) and False
Advertising (Sixth Cause of Action) Under New York Law
ETS has also moved for

summary judgment on S'well's claims

under Sections 349 and 350 of the New York General Business Law.
Section 349 prohibits "[d]eceptive acts or practices in the conduct
of

any business,

trade or commerce or in the

service in this state." N.Y.
prohibits
trade

or

state."

"[f]alse
commerce

Id.

§

Gen.

advertising
or

350.

in

the

Bus.

in

the

Law §

furnishing

349(a).

conduct

furnishing

of

any

of

(1)

service

(2)

materially misleading and that

suffered

as

a

practice." Orlander v.

result

of

Staples,

the
Inc.,

in

this

a plaintiff

consumer-oriented

conduct that is
inJury

Section 350

any business,

To succeed under either section,

must show "that a defendant has engaged in

of any

(3)

plaintiff

allegedly deceptive
802 F.3d 289,

2015)

(quoting Koch v. Acker, Merrall & Condit Co.,

(N.Y.

300

act

or

(2d Cir.

2012)).
To

be

"consumer-oriented,"

the

practice

967 N.E.2d 675

must

threaten

an

inJury "to the public interest over and above ordinary trademark
infringement or dilution." Nomination Di Antonio E Paolo Gensini
S.N.C. v. H.E.R. Accessories Ltd., No. 07-cv-6959, 2009 WL 4857605,
at *8 (S.D.N.Y. Dec. 14, 2009)

(internal quotation marks, citation,

and emphasis omitted). Although competing businesses have standing
to

sue under

consumer

these provisions,

protection

devices,

the provisions are

so

21

"the

gravamen

of

fundamentally
the

complaint

must be consumer injury or harm to the public interest," not mere
competitive disadvantage. Securitron Magnalock Corp. v. Schnabolk,
65

F.3d 256,

264

(2d Cir.

1995)

(internal

quotation marks

and

citation omitted).
ETS argues that plaintiff fails to allege any public injury
beyond

the

confusion

generally

associated

with

trademark

infringement. S'well responds that it has shown a genuine dispute
of fact regarding whether ETS's products are of lower quality than
the S'well Bottle, and that the possibility of confused consumers
purchasing an inferior product suffices to fulfill the "consumeroriented" element of these claims.
Courts in this circuit differ regarding the severity of the
threat

to

the

public

that

Sections

349

and

350

require.

Some

district courts have required "significant ramifications for the
public at large," Shred-It USA,

Inc.

v. Mobile Data Shred,

228 F. Supp. 2d 455, 465 (S.D.N.Y. 2002)
omitted),

Inc.,

(internal quotation marks

or "potential danger to the public health or safety,"

Romeo & Juliette Laser Hair Removal, Inc. v. Assara I LLC, No. 08cv-442,

2014 WL 4723299,

courts "have

at

*4

(S.D.N. Y.

Sept.

23,

2014).

These

routinely dismissed trademark claims brought under

Sections 349 and 350 as being outside the scope of the statutes,
because ordinary trademark disputes do not pose a significant risk
of harm to the public health or interest and are therefore not the
type

of

deceptive

conduct

that

22

the

statutes

were

designed

to

address." Kaplan,

Inc. v. Yun,

2014)

quotation

(internal

16 F. Supp.

marks

3d 341,

omitted) .

352

One

(S.D.N.Y.

such

court

specifically held that even the potential that confused consumers
may

purchase

dangerous

an

actually

to make

the

inferior

practice

product

is

insufficiently

"consumer-oriented"

statutes. See Conopco Inc. v. Wells Enterprises,

under

these

Inc., No. 14-cv-

2 2 2 3, 2015 WL 2330115, at * 6 ( S. D. N. Y. May 14, 2015) .
However,
courts

the issue is ultimately a question of how New York

(and especially,

Appeals)

interpret Sections 349 and 350,

undersigned,
district
oriented'

its highest court,

"the

courts

elevated

have

element of

and in the view of the

requirements

apparently
§

the New York Court of

engrafted

that
onto

some

[federal]

the

'consumer-

349 claims lack a basis in governing New

York law" as interpreted by New York's own courts. Casper Sleep,
Inc. v. Mitcham, 204 F. Supp. 3d 632, 643 (S.D.N.Y. 2016)

.6

As the

New York Court of Appeals has held, "These statutes on their face
apply to virtually all

economic activity,

6

and their application

See also Koch v. Greenberg, 626 Fed. Appx. 335, 340 (2d Cir.
2015) ("[G]iven that the defendant provided wine to be sold at
auction to other con~umers similarly situated to [plaintiff],
the consumer-oriented conduct requirement has been met.");
Casper Sleep, Inc. v. Derek Hales & Halesopolis LLC, No. 16-cv03223, 2016 WL 6561386, at *8 (S.D.N.Y. Oct. 20, 2016); Stewart
v. Riviana Foods Inc., No. 16-cv-6157, 2017 WL 4045952, at *8
(S.D.N.Y. Sept. 11, 2017); Kacocha v. Nestle Purina Petcare Co.,
No. 15-CV-5489 (KMK), 2016 WL 4367991, at *13 (S.D.N.Y. Aug. 12,
2016); In re Sling Media Slingbox Advert. Litig., 202 F. Supp.
3d 352, 359 (S.D.N.Y. 2016).
23

has

been

N.E.2d

correspondingly broad."

662,

665

(N.Y.

1999).

between minor economic harms

Karlin

New

v.

York

IVF Am.,

Inc.,

712

distinguish

not

to public safety,

but

courts

and threats

between disputes that are essentially between two parties, such as
contract disputes,

and "acts or practices

[that]

have a broader

impact on consumers at large." Oswego Laborers' Local 214 Pension
Fund v. Marine Midland Bank, N.A., 647 N.E.2d 741, 744 (N.Y. 1995)
In Oswego,

for example,

there was no great

threat to health or

safety: a bank allegedly did not adequately disclose that interest
in savings accounts would not be paid on deposits

in excess of

$100,000. Id. What mattered was that the bank treated the plaintiff
as

they

would

any

other

consumer,

not

that

this

injury

was

defendant's

motion

for

incredibly grave.
Nonetheless,

the

Court

wil 1

grant

summary Judgment on these claims,

as S'well

has not shown that

there is a genuine dispute as to whether the allegedly infringing
ETS

bottles

are

inferior

to

S'well

Bottles.

S'well

points

to

deposition testimony that there have been complaints "from time to
time" about customer misuse leading to leaks and the "imprint" on
Force

Bottles

coming

off.

Safier

Deel.

Ex.

9,

Deposition

of

Jennifer V. Campolini 13:22-15:12. Another employee testified that
sometimes
because

of

the

products

customer

leak

error,

because
but

he

a

batch

is

could point

badly made
to

no

or

specific

instance. Penchina Deel. Ex. 3, Deposition of Robert James Derrig,

24

Jr.

("Derrig

Dep. ")

17:1-24.

Putting

aside

hearsay

S'well has arguably shown in these instances that

problems,

Force Bottles

are not always perfect. But S'well adduces no evidence that S'well
Bottles do not leak when misused or that their customized labels
do not occasionally chip off. No reasonable Juror could find that
Force Bottles are an inferior product

based only on this vague

testimony and with no evidence of the comparative quality of S'well
products.
S' we 11

also

manufactures,
Bottle,

but,

points

to

the

plastic

Impact

Bott 1 e

that

ETS

which shares the same shape and cap as the S'wcll
unlike the S'well Bottle,

steel. S'well 56.1 Resp.

<j[

is not made of stainless

35. However, none of S'well' s claims .in

its complaint involved the Impact Bottle,

so the extent to which

it

no reasonable consumer

is confusing is

irrelevant.

Moreover,

purchasing plastic Impact Bottles will think she is purchasing a
stainless steel S'well Bottle,

nor will she infer that S'well's

steel bottles are somehow worse simply because a plastic version
exists.

Such a

consumer may think the

Impact Bottle

linked to S'well,

but that consumer confusion is

consumer-oriented

to

state

a

claim under

New

is

somehow

insufficiently

York's

deceptive

practices and false advertising statutes.
Defendant's

motion

for

summary

judgment

dismissing

plaintiff's claims for violation of New York's deceptive acts and
false advertising statutes is therefore granted.

25

III. False Designation and Unfair Competition under the Lanham Act
{Second Cause of Action) and New York Common Law Unfair
Competition {Fourth Cause of Action)

As

noted,

S'well's

causes

ETS

seeks

of

action.

summary
By

judgment

contrast,

dismissing

S'well

has

all

moved

of
for

summary judgment in its favor only as to liability and only on two
of its claims against ETS: false designation and unfair competition
under the Lanham Act
unfair competition
turns

to

(its second cause of action)
(its

consideration

fourth
of

cause of action).

these

and common law
The Court now

competing motions

as

to

these

claims.
Section

43 (a)

of the

Lanham Act rr.akes

liable,

in relevant

part, anyone who
uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any
false
des1gnat1on
of
origin,
false
or
misleading description of fact, or false or
misleading representation of fact, which is
likely to
cause
confusion,
or
to
cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another
person,
or
as
to
the
origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another
person.
15 U.S.C.

§

1125(a) (1) (A)

The standards for unfair competition

claims under New York law are generally the same as those under
the Lanham Act, with the additional element of bad faith. See U.S.
Polo Ass'n,
538

Inc.

v.

PRL USA Holdings,

(S.D.N.Y. 2011).

26

Inc.,

800 F. Supp. 2d 515,

S'well contends that ETS has

(1)

misleadingly suggested to

its customers that Force Bottles are a type of S'well Bottle, and
( 2)

sold Force Bottles to customers who requested S' we 11 Bottles

without informing them of the difference. ETS, for its part, argues
that

neither

requirement

claim
and

meets

that

the

there

is

Lanham

Act's

insufficient

"use

in

evidence

commerce"
to

show

a

genuine dispute on this requirement.
A.

The "Use in Commerce" Requirement

The Second Circuit has held that the definition of "use in
commerce" found in 15 U.S.C.

§

1127 applies to all claims under

the Lanham Act, including Section 43(a). See 1-800 Contacts, Inc.
v. WhenU.Com, Inc., 414 F.3d 400, 407 (2d Cir. 2005). Section 1127
provides as follows:
The term "use in commerce" means the bona fide
use of a mark in the ordinary course of trade,
and not made merely to reserve a right in a
mark. For purposes of this chapter, a mark
shall be deemed to be in use in commerce-(1)

on goods when-(A) it is placed in any manner on
the goods or their containers or the
displays associated therewith or on
the tags or labels affixed thereto,
or if the nature of the goods makes
such placement impracticable, then
on documents associated with the
goods or their sale, and

sold
are
goods
the
transported in commerce, and
(B)

or

on services when it is used or
displayed in the sale or advertising of
(2)

27

services and the services are rendered in
commerce, or the services are rendered in
more than one State or in the United
States and a foreign country and the
person rendering the services is engaged
in
commerce
in
connection with
the
services.
18

u.s.c.
As

§

1127.

noted,

the

Second Circuit

in

the

1-800

Contacts

case,

supra, held that the "use in commerce" requirement applies to all
claims brought under the Lanham Act. This decision remains binding
on this district court.
later

panel

of

the

However,

Second

(al though non-binding)

it should be mentioned that a

Circuit

engaged

in

an

exhaustive

study of the history of the above-quoted

provision and concluded that "Congress did not intend that this
definition apply to the sections of the Lanham Act which define
infringing conduct. The definition was rather intended to apply to
the sections which used the phrase in prescribing eligibility for
registration and for the Act's protections." Rescuecom Corp.

v.

Google Inc., 562 F.Jd 123, 139 (2d Cir. 2009); see also 4 McCarthy
on Trademarks and Unfair Competition

§

23: 11. 50 (5th ed.)

that Sect ion 1127 "defines the kinds of

'use'

(arguing

needed to acquire

registerable trademark rights -

not to infringe them"). According

to

in

Rescuecom Corp.,

applied only to
this

the

trademark

"use

commerce"

registration,

score arose only because a

clearly

and any uncertainty on

1962 amendment,

itself described only as "rearrang[ing]

28

requirement

which Congress

the language," shuffled

some words around such that
been

in

separate

Rescuecom Corp.,

clauses,

"use" and "in commerce," which had
were

562 F. 3d at

now

135-37.

together

in

Section

Congress nowhere

1114.

indicated

that it intended to impose the restrictive definition of Section
1127 on those infringement claims. Id. at 137.
According to Rescuecom Corp., Congress's intent was made even
clearer when it amended this section

in

1988,

adding the

f1 rst

sentence of the definition ("The term 'use in commerce' means the
bona fide use of a mark in the ordinary course of trade,
made merely to
notes

that

reserve a

this

right

amendment

in a mark.")

was

intended

and not

The Senate Report
to

"eliminate

the

commercially transparent practice of token use" and to "apply to
all aspects of the trademark registration process." S.
100-SlS,

at

45,

as

reprinted

in

1988

U.S.C.C.A.N.

Rep.

5577,

No.

5608.

"Clearly, however, use of any type will continue to be considered
in an infringement action." Id.
1127

does

not

apply

to

This is "clear" because Section

infringement

actions

if

it

did,

its

limitation of "use in commerce" to "the bona fide use of a mark"
would mean infringing conduct would never be "in commerce" under
that definition.
Despite Congress's clear intent, even the court in Rescuecom
Corp.

refused to entirely reject the application of Section 1127

to infringement claims.

Section 1127 states that its definitions

apply "unless the contrary is plainly apparent from the context."

29

18 U.S.C.
that

§

"[i]t

1127. Although the Rescuecom Corp.
is

easy

to

imagine

perniciously

court recognized
confusing

conduct

involving another's mark which does not involve placement of the
mark in the manner specified in the definition," it concluded that,
"in spite of those doubts, one could not have said it was 'plainly
apparent from the context'

that those restrictions did not apply

to sections defining infringement." Rescuecom Corp.,

562 F.3d at

139. Because the Second Circuit prior to the 1988 amendments agreed
with

this

applying

conclusion,
the

the

placement

Rescuecom

requirements

Corp.
of

court
the

recommended

definition

to

infringement claims, but not the "bona fide use" requirement. Id.;
see also GoForit Entm't,

LLC v.

2d 712, 726 (N.D. Tex. 2010)
In this Court's view,

DigiMedia.com L.P.,

750 F.

Supp.

(adopting this approach).
it was always "plainly apparent

from

context" that Section 1127 does not apply to infringement claims.
Nevertheless, despite the confusion (in every sense) generated by
the competing discussion in 1-800 Contacts and Rescuecom Corp.,
the Circuit has not overruled 1-800 Contacts and S'well has failed
meet its requirements.
S'well argues that the use of a mark to promote other goods
at the point of sale is sufficient to meet the "use in commerce"
requirement, whether it is physically printed on something or not.
But the "use" of a mark "in the sale" of a product falls under the
definition

of

"use

in

commerce"

30

for

the

sale of

services,

not

goods.

S'well,

as

it must,

relies principally on Ninth Circuit

precedent, where courts are not bound by 1-800 Contacts. See CocaCola Co. v. Overland,

Inc., 692 F.2d 1250, 1255 (9th Cir. 1982) . 7

The only arguably "printed" version of the S'well mark is in
ETS's Retail Brands Guide.

See Penchina Deel.

Ex.

26.

But ETS's

use of the mark in this guide is more akin to use "in the sale or
advertising"

of

the

product

than

it

is

to

a

sales

display.

Furthermore, no reasonable juror would find that this guide could
confuse a distributor into thinking that the Force Bottle was a
version of the S'well Bottle,

as it clearly states that the two

are simply similar, and the Guide contains dozens of other retail
brands along with their ETS analogue.
Thus,

even if ETS employees actually provided Force Bottles

to distributors seeking S'well Bottles without informing them, and
even

if

ETS

representatives

really

did

suggest

in

emails

to

distributors that Force Bottles were a type of S'well Bottle, ETS

7

None of the cases from this Circuit that plaintiff cites
supports its position. In Tiffany & Co. v. Costco Wholesale
Corp., the mark in question was "in the display case signs [and]
positioned on those signs where the brand manufacturer's name
would generally be for other products." 127 F. Supp. 3d 241,
254-55 (S.D.N.Y. 2015). In Menashe v. V Secret Catalogue, Inc.,
the mark was printed in a catalog and on a website where you
could purchase the goods. 409 F. Supp. 2d 412, 424 (S.D.N.Y.
2006). In C=Holdings B.V. v. Asiarim Corp., the mark was also
used on a website where you could purchase the goods. 992 F.
Supp. 2d 223, 240 (S.D.N.Y. 2013). In all three of these cases,
the mark was "placed" on "displays" associated with the goods,
and thus ''used in commerce" under 15 U.S.C. § 1127.
31

nonetheless did not violate Section 43(a) of the Lanham Act because
of an absence of applicable "use in commerce."
Because,

regretfully, 1-800 Contacts remains binding on this

Court, and because defendant's alleged use of plaintiff's mark was
not "in commerce" under 15 U.S.C.
summary

Judgment

on

§

plaintiff's

1127, defendant's motion for
second

claim,

for

false

designation and unfair competition under the Lanham Act, must be
granted.
However,

there is no reason to believe that New York courts

would impose the same "use in commerce" limitation on common law
unfair competition claims,

including plaintiff's fourth cause of

action. The limitation imposed by 1-800 Contacts arises from that
court's misreading of the text of the Lanham Act, and there is no
such statute at issue in New York. Instead, there is only the broad
common law. As the Second Circuit has pointed out,
New York courts have noted the "incalculable
variety" of illegal practices falling within
the unfair competition rubric, calling it a
"broad and flexible doctrine" that depends
"more upon the facts set forth than in most
causes
of
action."
It
has
been broadly
described
as
encompassing
"any
form
of
commercial
immorality,"
or
simply
as
"endeavoring to reap where one has not sown";
it is taking "the skill, expenditures and
labors of a competitor," and "misappropriating
for the commercial advantage of one person a
benefit or
'property'
right belonging to
another." The tort is adaptable and capacious.

32

Roy Exp.

Co.

Establishment

of Vaduz,

Liechtenstein v.

Broad. Sys., Inc., 672 F.2d 1095, 1105 (2d Cir. 1982)

Columbia

(alterations

and internal citations, all to New York courts, omitted).
Indeed,
recognized

the
that

New
the

York

Court

common

law

of
of

plaintiff's claims. "Palming off -

Appeals
unfair

has

specifically

competition

reaches

that is, the sale of the goods

of one manufacturer as those of another - was the first theory of
unfair

competition

extended

to

endorsed

situations

by

New
the

where

York

parties

competition." ITC Ltd. v. Punchgini,
N.E.2d 852,

858

(2007)

(internal

Inc.,

courts,
are

and

has

not

been

even

in

9 N.Y.3d 467, 476, 880

quotation marks,

citation,

and

alterations omitted). As that Court noted, "One of the most obvious
forms of palming off occurs when the copier of an article overtly
and

explicitly misrepresents

its

source,

for

example,

where

a

defendant substituted its product for plaintiff's when customers
specifically
(internal

asked

quotation

for

plaintiff's

marks,

product."

alterations,

and

Id.

at

citation

858

n.2

omitted)

That is exactly what plaintiff alleges ETS has done here.
Unfair competition claims under New York common
otherwise

resemble

Lanham Act

claims

do

not

require

law that
that

the

allegedly infringing mark be "used in commerce" as defined by 18
U.S.C.

§

1127. The Court therefore turns to what plaintiff's claim

does require under New York law.

33

B.

Validity of the Trademark and Likelihood of Confusion

If the mark S'well seeks to protect

is invalid,

then ETS's

alleged use of that mark is not unfair. "A trade mark to be valid
as such, must be a distinguishing mark of the goods to which it is
attached." Taylor v. Gillies, 59 N. Y. 331, 334 (1874). ETS suggests
that

the

S'well

evidence,

mark

such as a

has

become

generic,

consumer study,

but

puts

forward

indicating that

no

the public

uses the words "S'well" or "Swell" to describe the specific shape
of a bottle and does not connect the words to a specific source.
ETS has not shown, therefore, that there is no genuine dispute as
to the validity of S'well's mark.
New York courts
Polaroid

factors

confusion.
Twelve,

See,

in trademark cases

also examine the eight

to determine whether there
e.g.,

is

a

likelihood of

George V Restaurat1on S.A.

Inc., 871 N.Y.S.2d 65,

67

v.

Little Rest

(N.Y. App. Div. 2009). However,

ETS is allegedly using S'well's exact mark -

the word "S'well" -

so, as with counterfeit claims, it is not necessary to perform the
step-by-step examination of each Polaroid factor. Use of the exact
same mark is inherently confusing.
Jamelis Grocery,
As

Inc.,

discussed

378 F. Supp. 2d 448, 455

above,

ultimately receive are
post-receipt.

See Lorillard Tobacco Co.

Confusion

the

Force

similar enough
is

even

more

(S.D.N.Y. 2005).

Bottles
to make
likely

v.

that

customers

confusion
if,

as

likely

plaintiff

alleges, ETS has misled distributors into believing that they did

34

receive S'well Bottles,

by either delivering Force Bottles when

they ordered S'well Bottles or telling them that Force Bottles are
a type of S'well Bottle. The question,

then,

is whether there is

a genuine dispute as to whether or not ETS employees have actually
used S'well's trademarked name in the manner alleged.
C.

Selling Force Bottles to
S'well Bottles; Bad Faith

Distributors

Who

Requested

S'well contends that the evidence shows that ETS salespeople
regularly
fulfill

field

orders

from

distributors

those orders with Force Bottles,

for

S'well

bottles,

and never explain that

the two are not the same. S'well points to multiple emails in which
various distributors ask for "S'well" or "Swell" bottles and ETS
employees,

at least in the threads produced,

do not clarify that

they only sell Force Bottles. See Penchina Deel. Exs. 40-46.
ETS maintains

that

these

requests

were

in

fact

for

Force

Bottles, and that, as Sharon Eyal, ETS's CEO, testified, "a lot of
people call it
11,

JUSt

'the S'well shape.'" Carwin Opp.

Deposition of Sharon Eyal 51:3-5.

Deel.,

Ex.

Sharon Eyal testified that

they "try" to train their sales staff to correct customers who ask
for S'well Bottles, but repeat customers consistently respond that
they know they are getting the Force Bottle and are just referring
to the shape, sometimes growing frustrated by being corrected. Id.

35

132:19-133:15. 8 After this litigation began, S'well employees were
told that they must correct distributors asking for S'well Bottles.
Penchina

Deel.

"gentle

reminder,"

indicating

Ex.

that

4 7.

That

but

email

there

salespeople

des er ibes

is

had

some

not

it se 1 f

as

deposition

previously

being a
testimony

received

this

instruction. See Penchina Deel. Ex. 17, Deposition of Jeffrey Hinds
175:20-24.
One

ETS

salesperson

testified

that,

if

a

distributor

references S'well in an email and she responds discussing Force
Bottles,

she must have "had a

conversation in person or on the

phone that's not related in the e-mail,

for example,

that would

have either clarified or I would have had knowledge that they're
clear on what our bottle is." Carwin Opp. Deel., Ex. 10, Deposition
of

Cristina

Ysselstein

18:13-19.

Another

employee

similarly

testified that repeat customers "get upset sometimes if you keep
asking

them

to

confirm what

things like, "'Dang it,
asking me.

Jen.

item they' re

looking

for,"

saying

You know what I'm looking for.

You know it's the Force.'" Carwin Opp.

Deel.,

Stop

Ex.

7,

Deposition of Jennifer Campolini 54:3-10.

8

Though inadmissible to prove the truth of the matter asserted,
this and similar testimony about what distributors told ETS
employees is admissible to show defendant's good faith. See
United States v. Certified Envtl. Servs., Inc., 753 F.3d 72, 89
(2d Cir. 2014) ("In this case, the proffered ev1dence was not
offered for its truth but to show that the statements occurred
and that, given their effect on the defendants' state of mind,
they provided a good faith basis for the defendants' actions.")

36

The Court finds that a reasonable juror could find for either
party on this evidence, making summary judgment inappropriate.
S' well

has

adduced evidence

from which

a

reasonable

juror

could conclude ETS has passed off Force Bottles as S'well Bottles.
In

one

email,

a

distributor

requested

that

the

salesperson

requested S'well Bottles,

and asked that

ETS "try to get

these

exact

Penchina

Ex.

email

brands

and

i terns!"

Deel.

41.

Another

involved an obviously new customer - she introduced herself in the
initial email - who asked for a quote and sample of S'well Bottles.
Penchina Deel. Ex.

44. The ETS employee never clarified that they

sell Force Bottles, and after several exchanges and the passage of
two weeks,
This

does

the distributor again referred to S'well bottles.
not

square

with

ETS' s

story

that

they

Id.

corrected new

customers who inquired about S'well Bottles. In fact, ETS provides
no emails

in which an ETS employee clarified that Force Bottles

were not affiliated with S'well. ETS is therefore not entitled to
summary judgment.
However,

a

reasonable

juror

could

also

find

that

these

distributors generally used "S'well" to reference the shape of the
desired

bottles,

not

the

brand.

S'well

argues

elsewhere

that

participants in the market strongly associate the shape of S'well
bottles

with

the

S'well

brand,

supporting

an

inference

distributors would use "S'well" to refer to the shape,

but

they

to

will

receive

Force

Bottles.

37

Many

of

the

emails

that
know
which

plaintiff points appear to be from repeat customers or plainly do
not contain all the communications associated with the order.
a

If

juror believes the testimony of S'well salespeople that their

general practice was to correct new customers who asked for S'well
Bottles,

they

may

reasonably

infer

that

the

distributors

who

requested S'well branded bottles were corrected in separate emails
or

phone

calls.

Moreover,

testimony credible,

then

if

the

they will

jury

finds

conclude

ETS

that

the

employees'
employees

believed in good faith that distributors knew they were going to
receive Force Bottles even when they used the word "S'well."
Cred1b1l1ty determinations are squarely the province of the
jury. Anderson,
element

477 U.S.

at 255. Because bad faith is a required

under New York law,

and there exists a

genuine

factual

dispute as to whether it was present or absent here, neither party
is entitled to summary judgment on this claim.
D.

Claiming That Force Bottles Are S'well Branded Bottles

S'well also cites several emails in which it claims that ETS
told customers that its Force Bottle is a version of the S'well
Bottle

specific

to

the

promotional

products

market.

Defendant

argues that its employees were not communicating that Force Bottles
are S'well-branded, only that the two are very similar, and that
Force Bottles are sold mostly in the promotional space while S'well
Bottles are sold mostly by retailers.

38

The

first

email

chain

is between a

distributor and an ETS

sales manager in which the distributor asks, referencing the Force
Bottle,

"What is the retail brand that looks like this?" and the

manager responds, "The S'well bottle is the retail version of this
bottle."
suggests

Penchina
that

he

Deel.
knows

Ex.

the

34.

The

distributor's

Force Bottle is

"the retail brand," and that

not

question

affiliated with

the Force Bottle just "looks like"

the retail brand. A reasonable juror could therefore find that the
employee meant to convey only that the Force Bottle is similar to
the S'well Bottle, which is sold in retail stores.
Second is an email chain between Rob Derrig, the ETS accounts
manager,

and

Dave

Gephart,

a

potential

distributor,

subject line "Yeti and S'well." Penchina Deel.
chain appears to have originated with Derrig,

Ex.

with

the

35. The email

suggesting he wrote

the subject line. In the first email, Derrig tells Gephart that he
understands Gephart was "looking for some information on our Polar
and

h2go

computer

force."
company

Gephart
is

VERY

responds

by

interested

in

provides links to ETS products and says,
h2go force

(S'well)

" Id.

saying,

"Another

S'Wells."

Derrig

large
then

"Below are links to our

In his deposition,

Derrig said that he

was "not meaning to identify it as a S'well product but as a S'well
alternative." Derrig Dep. 100:20-101:3.
Third, plaintiff cites an email from Derrig to a distributor
in which he references the price for their "force/S'well" bottle.

39

Penchina Deel.
email,

Ex.

58. Although there is no testimony about this

ETS argues that Derrig again intended to communicate that

the Force Bottle is a

similar alternative to the S'well Bottle,

not that the two are otherwise related. ETS 56.1 Resp.
A

genuine

dispute

remains

as

to

whether

~

these

63.
two

ETS

employees were actually claiming that Force Bottles were S'wellbranded bottles or were simply similar in shape. Again, plaintiff's
claim turns on the credibility of the ETS witnesses regarding what
they meant to communicate in these emails.
Judgment

motions

as

to plaintiff's

Both parties'

New York

unfair

summary

competition

claims are therefore denied.
IV.

Conclusion
For the reasons stated above, defendant's motion for summary

judgment

is

sixth causes
competition

granted
of
in

dismissing

action

plaintiff's

second,

fifth,

and

(false designation of origin and unfair

violation of

the

Lanham Act,

deceptive

acts

and

practices in violation of New York General Business law § 349, and
false advertising in violation of New York General Business Law §
350), but is otherwise denied,

and plaintiff's motion for summary

judgment is denied in its entirety. The Clerk of Court is ordered
to close documents numbered 52 and 56 on the docket.
SO ORDERED.
Dated:

New York, NY
January /"S', 2018

JED S. RAKOFF, U.S.D.J.

40