Apollo Health and Beauty Care Inc. v. Sol De Janeiro USA Inc. et al

Filing 306

OPINION & ORDER: For the foregoing reasons, all questions related to Apollo's liability for trade dress and trademark infringement are preserved for trial, and SDJ's claims for prospective corrective advertising damages and reasonable royalty damages are dismissed. (Signed by Judge Louis L. Stanton on 10/23/2024) (ml)

ORIGINAL

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UNITED STATES DISTRICT COURT
SOUTHERN DISTR I CT OF NEW YORK

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APOLLO HEALTHCARE CORP . d/b/a
APOLLO HEALTH AND BEAUTY CARE ,
Plaintiff ,
- against SOL DE JANEIRO USA INC . and
SOL DE JANEIRO IP , INC .,
Defendants .
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22 Civ . 7719

SOL DE JANEIRO USA INC . and
SOL DE JANEIRO IP , INC .,

(LLS)

OPINION & ORDER

Counterclaim- Plaintiffs ,
- against APOLLO HEALTHCARE CORP . d/b/a
APOLLO HEALTH AND BEAUTY CARE
and COSTCO WHOLESALE CORP . ,
Counterclaim-Defendants .
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Plaintiff Apollo Healthcare Corporation , doing business as
Apollo Health and Beauty Care , brought a declaratory judgment
action against defendants Sol de Janeiro USA Inc. and Sol de
Janeiro IP , Inc .

(together, "SDJ" ) concerning trade dress and

trademark rights in body cream products . SDJ filed counterclaims
against Apollo Healthcare Corporation and Costco Wholesale Corp .
(together , "Apollo " ) for trade dress and trademark infringement
and unfair competition under the Lanham Act and the laws of New
York , seeking actual and compensatory damages .
1

Pending before this Court are two motions for summary
judgment . Apollo moves for summa·ry judgment to dismiss SDJ ' s
trade dress and trademark infringement counterclaims (0kt . No.
137), as well as partial summary judgment to dismiss two of
SDJ's damages claims , prospective corrective advertising damages
and reasonable royalty damages

(0kt . No . 167).

For the reasons that follow, all questions on Apollo's
liability for trade dress and trademark infringement are
preserved for trial, and SDJ's claims for prospective corrective
advertising damages and reasonable royalty damages are
dismissed .
BACKGROUND

SDJ is a beauty company that launched its first products in
2015 . SDJ ' s Rule 56 . 1 Counterstatement of Material Facts on
Liability (" COFL " )

~~

76 , 88

(0kt . No . 231) . SDJ began when

cofounder Heela Yang moved to Brazil and was inspired "by the
beauty confidence of Brazilian women. " Id.

~

78 . In 2014, she

began working with her cofounder , Marc Capra , to develop a brand
that would "celebrate women ' s natural beauty. " Id.

~

79 . SDJ ' s

" hero" product is BRAZILIAN BUM BUM CREAM , a best - selling
moisturizer . Id.

~

93 . Ms . Yang was primarily responsible for

the design of the cream and chose a round jar with a large,
overhanging lid to represent "curvaceous oversize more real
women versus skinny models" and a name that would evoke the
2

" body confidence of Brazilian women . " Id . i i 81 - 82 . Images of
SDJ ' s BRAZILIAN BUM BUM CREAM product and displays are below :

Apollo ' s Rule 56 . 1 Statement of Material Facts o n Liability
( " SO FL " ) i

2 5 ( Dk t . No . 14 2 ) . 1

In 2016 , BRAZ I LI AN BUM BUM CREAM debuted in Sephora stores
nationwide and quickly became a hit. COFL i

89. BRAZILIAN BUM

BUM CREAM became t he #1 bestsel l ing skincare product at Sephora
and the #1 bestse l ling product in the " body cream" categor y on
Amazon . com . Id . i i

89 - 91 . It retails for $48 for a single 2 40 ml

or 8 . 1 oz container . SOFL i 30 . Many companies have sought to
carry BRAZILIAN BUM BUM CREAM in their stores , including Costco ,
which reached out to SDJ in 2020 . COFL i i 95 , 107 . SDJ ' s CEO and
corporate designee testified that SDJ "would never consider
sel li ng [ it s] product at Costco ." SOFL i 29 .

1 These images are illustrative and do not represent every possible form of
packa ging or p r oduct d isplay .

3

Apollo manuf a ctures personal care products and has been in
business with Costco for at least 20 years . Id . ~ 4 . In late
2020 , Costco and Apollo started working together to create a new
moisturizer , NUTRIUS® BRAZILIAN BODY BUTTER CREAM , which was
first sold at Costco in June 2022 . Id .

~~

5 - 6 , 12 . NUTRIUS®

BRAZILIAN BODY BUTTER CREAM retails for $19 . 99 for a two-pack of
6 oz products at Costco .

Id.

~

14. As of summer 2023 , over 91%

of NUTRIUS® BRAZILIAN BODY BUTTER CREAM sales were through
Costco ' s warehouses. Id .

~

13 . Images of the NUTRIUS® BRAZILIAN

BODY BUTTER CREAM product and displays are below :
NUTRIUS

BRAZILIAN BODY BUTTER CREAM.
-----..-•~-..i••-l'IIIP

Id .

~

1 1. 2
On or about August 30 , 2022, SDJ ' s former counsel sent a

demand letter to Apollo ' s Co - Chief Executive Officers , Charles
and Richard Wachsberg . Id .

~

39 . SDJ claimed to own trade dress

rights in the BRAZILIAN BUM BUM CREAM ' s "very distinctive
packaging , comprised of a bright yellow round tub with a white

2 These images are illustrative and do not represent every possible form of
packaging or product display.

4

over s ized cap/lid , and the product name p rinted in black around
t he outs ide of the cap/ l id ," as well as trademark rights in the
BRAZIL I AN BUM BUM mark . Id .

~~

40 - 41 .

After the demand letter , Apollo brought suit for a
declaratory j u dgment that SDJ ' s trade dress rights in BRAZILIAN
BUM BUM CREAM were unenforceable , and that Apollo ' s NUTRIUS®
BRAZIL I AN BODY BUTTER CREAM did not infringe any valid trade
dress or trademark rights owned by SDJ . Second Amended Complaint
(Dkt . No . 55). SDJ counterclaimed that Apollo ' s NUTRIUS®
BRAZILIAN BODY BUTTER CREAM infringes its BRAZILIAN BUM BUM®
CREAM trade dress and trademark rights . Answer to Second Amended
Compla i nt and Amended Counterclaims (Dkt . No . 67) . SDJ seeks
actual and compensatory damages , including $37.7 million in
prospective corrective advertising damages and $1 . 15 million in
reasonable royalty damages . Apollo ' s Rule 56 . 1 Statement of
Material Facts on Damages ("SOFD") 1 3 (Dkt . No. 170). Apollo
now moves for summary judgment to dismiss SDJ ' s trade dress and
trademark infringement counterclaims (Dkt . No 137) and both of
those damages claims

(Dkt . No. 167) .
DISCUSSION

Summary Judgment Standard

Summary judgment is appropriate where "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); Celotex Corp .
5

v . Catrett , 477 U. S . 317 , 322

(1986) . A fact is material if ,

based on the substantive law , it " might affect the outcome of
the suit under the governing law ," and it is genuinely in
disp u te " if the evidence is such that a reasonable jury could
return a verdict for the nonmoving party ." Anderson v . Liberty
Lobby , I nc. , 477 U. S . 242 , 248

(1986) ; see also Baez v. JetBlue

Airways Corp ., 793 F.3d 269 , 274

(2d Cir . 2015)

( " Where the

record taken as a whole could not lead a rational trier of fact
to find for the nonmoving party , there is no genuine issue for
trial ." ) .
The moving party bears the initial burden of demonstrating
the absence of a genuine issue of material fact . Celotex Corp .,
477 U. S . at 323 . If the moving party meets its burden , the
adverse party " may not rest upon the mere allegations or denials
of his pleading but must set forth specific facts showing that
there is a genuine issue for trial. " Anderson , 477 U. S . at 248
(internal quotations and citations omitted) ; see also Hicks v .
Baines , 593 F . 3d 159 , 166 (2d Cir . 2010)

( " [M]ere conclusory

allegations or denials ... cannot by themselves create a genuine
issue of material fact where none would otherwise exist ." ) .
Courts are " not to weigh the evidence and determine the
truth of the matter but to determine whether there is a genuine
issue for trial ." Cioffi v . Averill Park Cent . Sch. Dist . Bd . of
Ed ., 444 F . 3d 158 , 162 (2d Cir . 2006)
6

(internal quotations and

citations omitted) . Courts "must construe all the evidence in
the light most favorable to the nonmoving party and draw all
inferences and resolve all ambiguities in that party ' s favor ."
Cartier , Inc. v . Sardell Jewelry , Inc., 294 Fed . Appx . 615 , 617
(2d Cir. 2008) . "Summary judgment should not be granted where
the record discloses facts that could reasonably support a
jury ' s verdict for the non - moving party. " Pinto v. Allstate Ins .
Co ., 221 F.3d 394, 398

(2d Cir . 2000).

Summary Judgment on Liability

Apollo moves for summary judgment dismissing SDJ ' s trade
dress and trademark infringement counterclaims. As the Court
made clear in its conferences with the parties, those Lanham Act
claims are particularly fact -in tensive and multi-pronged, making
them ill-suited for resolution on summary judgment . There are
numerous factual disputes regarding Apollo's alleged trade dress
and trademark infringement . As a result, Apollo's motion for
summary judgment on liability is denied .
1. Trade Dress Infringement

Trade dress " encompasses the design and appearance of the
product together with all the elements making up the overall
image that serves to identify the product presented to the
consumer. " Fun-Damental Too, Ltd . v . Gemmy Indus. Corp ., 111
F . 3d 993 , 999 (2d Cir . 1997). "To prevail in a trade dress
infringement suit under the Lanham Act , plaintiff must first
7

prove that its identifying mark is itself inherently distinctive
or that it has become distinctive by acquiring a secondary
meaning . Second , plaintiff must show that a likelihood of
confusion exists between its product and the defendant ' s . " Mana
Prod ., Inc . v . Columbia Cosms . Mfg. , Inc . , 65 F.3d 1063 , 1068
(2d Cir . 1995).
A. Secondary Meaning

" Trade dress generally falls into one of two categories :
product packaging or product design." Pure Power Boot Camp , Inc .
v . Warrior Fitness Boot Camp , LLC , 813 F . Supp . 2d 489 , 537
(S . D. N. Y. 2011) . Product packaging trade dress may be inherently
distinctive and protectable without a showing of secondary
meaning. See Wal - Mart Stores , Inc. v . Samara Bros ., Inc ., 529
U. S . 205 , 212

(2000)

("The attribution of inherent

distinctiveness to certain categories of.
derives from the fact that the very purpose of

product packaging
. encasing [a

product] i n a distinctive packaging, is most often to identify
the product ' s source. " ).
Product design trade dress , however , is only protectible
when it has acquired secondary meaning . Landscape Forms , Inc . v .
Columbia Cascade Co ., 117 F. Supp. 2d 360, 365 (S . D.N.Y. 2000).
Trade dress acquires secondary meaning when, "in the minds of
[consumers] , the primary significance of a product feature or
term is to identify the source of the product rather than the
8

product itself." Id. at 366 (quoting Inwood Laboratories, Inc.
v . Ives Lab., Inc ., 456 U. S . 844, 851 n.11

(1982)). Courts in

this Circuit "exercise particular caution when extending
protection to product designs," as product designs "almost
invariably" are used "not to identify the source of the product,
but to render the product itself more useful or more appealing ."
Yurman Design, Inc. v. PAJ,
2001)

Inc ., 262 F.3d 101, 114-15 (2d Cir .

(internal quotations and citations omitted). "[A] party

seeking to prove secondary meaning has a heavy burden." 20th
Century Wear, Inc. v. Sanmark-Stardust, Inc., 815 F.2d 8, 10 (2d
Cir. 1987)

(internal quotations and citations omitted). Factors

relevant to the secondary meaning analysis include :
advertising expenditures,
media coverage ,

( 4)

( 2) consumer studies,

sales success,

(1)

( 3) unsolicited

( 5) attempts to plagiarize

the dress , and (6) the length and exclusivity of the dress ' s
use. Christian Louboutin S.A. v . Yves Saint Laurent Am.
Holdings,

Inc.,

696 F.3d 206, 226 (2d Cir. 2012).

"Although the Second Circuit has stated that district
courts should be cautious in weighing these factors at the
summary judgment stage, it has nonetheless supported summary
judgment in cases where the proponent of the alleged trademark
has failed to raise a material issue of fact on the question of
secondary meaning ." Jewish Sephardic Yellow Pages, Ltd. v. DAG
Media,

Inc., 478 F. Supp. 2d 340, 344
9

(E.D.N . Y. 2007)

(citing

Mana Prod., 65 F.3d at 1071). If a plaintiff fails to establish
that its trade dress is entitled to protection, the Court's
analysis is complete. Mana,

65 F.3d at 1071.

There are clear questions of fact at every juncture here.
The parties dispute whether SDJ's trade dress is in product
design or product packaging. SOFL

~~

43, 45; COFL

~~

43, 45.

Apollo argues that "SDJ has admitted that its alleged trade
dress falls in the product design category," citing two
references to "product design" in SDJ's Answers. Apollo's
Memorandum in Support of Summary Judgment on Liability (Apollo
Liab. Mem.) at 15 (0kt. No 140). SDJ contests this, stating that
the "product is the cream to be massaged into the user's skin"
and "[a]lthough the product design may contain sourceidentifying elements, such as its singular scent, no such
element is part of the asserted trade dress in this case.
Instead, the decorative elements of the jar, lid, and labeling
that comprise the Bum Bum Trade Dress are all product packaging
elements." SDJ's Memorandum in Opposition to Summary Judgment on
Liability (SDJ Liab. Mem.) at 13 (0kt. No 234); COFL

~~

43,

45.

Since there is a factual dispute as to whether the trade
dress is in product design or product packaging, the Court need
not analyze secondary meaning, which may or may not be required
depending on the jury's findings. Secondary meaning analysis is
similarly fact-intensive, and the Second Circuit has warned
10

against deciding it on summary judgment , as it is apt to require
a trial .

B. Functionality
" [A] product feature is functional,

and cannot serve as a

trademark , if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article . "
Yurman Design , 262 F.3d at 116 (internal quotations and
citations omitted). "On one end , unique arrangements of purely
functional features constitute a functional design . On the other
end , distinctive and arbitrary arrangements of predominantly
ornamental features that do not hinder potential competitors
from entering the same market with differently dressed versions
of the product are non - functional and hence eligible for trade
dress protection . " Fabrication Enters .,
64 F . 3d 53 , 59

(2d Cir . 1995)

Inc . v. Hygenic Corp .,

(internal quotations and citations

omitted) . "[T]he functionality of the trade dress must be
assessed with respect to the trade dress as a whole ." Diageo N.
Am .,

Inc . v . W. J . Deutsch & Sons Ltd .,

626 F . Supp.

3d 635,

648

(S . D. N.Y. 2022) . "[T]he person who asserts trade dress
protection has the burden of proving that the matter sought to
be protected is not functional . " 15 U. S . C . § 1125(a) (3)
Once again , the parties dispute nearly all key facts related
to functionality . Apollo argues that the following features are
functional :
11

The rounded bottom of the jar and the large,
overhanging lid serve several utilitarian purposes,
such as: (i) allowing consumers to more easily remove,
or scoop out, the cream; (ii) providing strength to
the container so that it does not break during
packaging, transport, merchandising, or shipping to
end consumers, which is particularly important for
products containing heavy, thick creams where the
weight of the product makes the container especially
vulnerable to breakage during transport; and (iii)
allowing consumers to more easily grasp the lid and
tighten it to create a seal that preserves the
remaining cream.
SOFL ! 65. Apollo also states that the writing is on the lid
because there is not enough space on the container itself, and
the color identifies the product's scent. Id. !! 66-67. SDJ
disputes those statements, explaining that Ms. Yang, SDJ's cofounder and CEO, who was primarily responsible for the packaging
and shape, testified that those purported functional benefits
had "nothing to do with" the design of the product packaging,
and that it "was a hundred percent aesthetics." COFL !! 65, 81.
"[T]he fact that it's round at the bottom was very, very
important to the brand, and then the overhang cap was a design
element that represents more of like a curvaceous oversize more
real women versus skinny models." Id. ! 82. "We're not a skinny
brand. We're not a tall skinny pump. We're chunky. We're like
that yellow bucket of sunshine and so, that's having an oversize
cap, we decided that that added to the overall aesthetics of
being chunky and that added to our brand experience." Id. These

12

are genuine disputes of material fact that are best left for the
jury .
C. Specificity

"Plaintiff must articulate the elements of their product
design with specificity to be afforded trade dress protection."
Urb . Grp . Exercise Consultants, Ltd. v. Dick's Sporting Goods,
Inc. , 2012 WL 3240442, at *4

(S . D.N . Y. Aug . 7 , 2012)

(internal

quotations and citations omitted) . "A trade dress infringement
claimant must enumerate which features of its purported dress
are distinctive and indicate how they are distinctive." GeigTech
E . Bay LLC v . Lutron Elecs. Co ., 352 F . Supp . 3d 265 , 276
(S.D.N.Y. 2018) . A "plaintiff's inability to explain to a court
exactly which aspects of its product design(s) merit protection
may indicate that its claim is pitched at an improper level of
generality, i . e. , the claimant seeks protection for an
unprotectable style, theme or idea." Landscape Forms , Inc. v.
Columbia Cascade Co ., 113 F.3d 373, 381 (2d Cir . 1997). "Without
such a precise expression of the character and scope of the
claimed trade dress , litigation will be difficult ," as courts
may struggle to "evaluate how unique and unexpected the design
elements are in the relevant market " or "shape narrowly tailored
relief ." Id . However , "trade dress may protect the overall look
of a product "; "[a]lthough each element of a trade dress
individually might not be inherently distinctive,
13

... the

combination of elements" may be indicative of source." Id.
(internal quotations and citations omitted).
SDJ describes the elements of its trade dress as follows:
[A] colored jar that has no writing on it which is
gently rounded at its bottom; a large, overhanging lid
that extends nearly half the height of the product and
protrudes outward over the jar body (rather than
screwing flush); a color-block combination of yellow
and white components; the product name presented in
capitalized dark-gray lettering framed by smaller text
above and below.
Answer to Second Amended Complaint and Amended Counterclaims
1 137

(0kt. No.

67).

Apollo argues that SDJ has failed to describe its trade
dress with the requisite specificity. However, SDJ does not
simply list general elements of its trade dress but enumerates
the particular features that make them unique, namely the
overhanging lid that does not sit flush with the base, the
specific shape of the jar, the yellow and white color scheme,
and the presence of SDJ's trademark on the product's oversized
lid in a particular color and style. Id. SDJ also includes a
number of photographs to demonstrate how those elements create a
unique overall look that differs from other lotions and creams
on the market.

Id. 11 137-38, 142-45. That description is not so

generalized as to render litigation difficult, and SDJ will have
ample opportunity to describe its trade dress with specificity
to the jury at trial.

14

D. Likelihood of Confusion

If a plaintiff does establish that its trade dress is
entitled to protection , the Court must then consider likelihood
of confusion , which is determined by eight Polaroid factors:
strength of the trade dress ;

( 2) similarity of the goods ;

(1)

( 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 trade dress was adopted in bad
faith ;

( 7) respective quality of the products ; and ( 8)

sophistication of consumers in the relevant market . Polaroid
Corp . v . Polarad Elecs. Corp . , 287 F.2d 492 , 495 (2d Cir . 1961).
Likelihood of confusion is typically a question of fact ,
"given the complexity of the test and the likelihood of material
factual disputes about a number of the factors ," but summary
judgment is appropriate if "the products or marks are so
dissimilar that no question of fact is presented. " Best Cellars ,
Inc . v . Wine Made Si mple , Inc ., 320 F . Supp . 2d 60 , 73 (S . D. N. Y.
2003)

(internal quotations and citations omitted). The Court

must " determine whether any reasonable trier of fact could
conclude that confusion is likely , and if so whether no
reasonable trier of fact could conclude that confusion is not
likely . " Id . at 74 .
15

The parties dispute every one of the Polaroid factors ,
making them inappropriate for resolution on summary judgment .
Nonetheless , the Court will briefly explore each one to outline
the factual disputes.
i.

Strength of the Trade Dress

Fi rst , "strength of a mark is determined by its tendency to
unique l y identify the source of the product . This tendency is
strong to the extent that the mark is distinctive , either
inherently or by virtue of having acquired secondary meaning ."
Star Indus ., Inc . v . Bacardi & Co., 412 F . 3d 373, 384
2005).

(2d Cir .

(internal quotations and citations omitted) . Apollo

argues that " SDJ ' s alleged trade dress falls in the product
design category , and thus cannot be inherently distinctive ."
Apollo Liab . Mem. a t

27 ; SOFL

~

43 , 45 . SDJ states that the

" jury could reasonably conclude that the Bum Bum Trade Dress i s
inherently distinctive " and " find that the Bum Bum Trade Dress
has acquired secondary meaning and is commercially strong ." SDJ
Liab. Mem . at 28 . As outlined in more detail above , the
questions of whether SDJ ' s trade dress is inherently distinctive
or has acquired secondary meaning are best left for the jury ,
and the Court need not answer them on summary judgment .
ii.

Similarity of the Goods

"In assessing similarity , courts look to the overall
impression created by the logos and the context in which they
16

are found and consider the totality of factors that could cause
confusion among prospective purchasers . " Gruner+ Jahr USA Pub .
v. Meredith Corp. , 991 F.2d 1072 , 1078 (2d Cir . 1993) . SDJ
argues that the products are not confusingly similar given the
different brand names and logos that are prominently displayed
on both products . SOFL

~

11 . SDJ disputes that the marks are

prominently displayed , claiming that Apollo only added the large
label after SDJ asserted its counterclaims. COFL

~

11 . SDJ also

highlights a number of similarities that could confuse
consumers , including an " identical packaging impression , " with
the same rounded jar and overhanging lid , yellow and white color
schemes, similar product names , and smaller text above and below
the product names. COFL

~~

113-14 , 118 . A jury is in the best

position to weigh these differences and similarities .
iii .

Proximity of the Products

Proximity of the products " focuses on whether the two
products compete with each other. In assessing this factor , the
court may consider whether the products differ in content ,
geographic distribution , market position , and audience appeal."
It's a New 10 , LLC v. Harmon Stores, Inc., 2017 WL 3208611 , at
*4

(S . D. N. Y. July 28 , 2017)

(internal quotations and citations

omitted) . Apollo argues that the products are not proximate, as
they are sold in different markets; 91 % of NUTRIUS® BRAZILIAN
BODY BUTTER CREAM is sold in Costco warehouses, where SDJ has
17

never sold its product , and 70% of SDJ ' s product is sold at
Sephora , where SDJ has an exclusivity agreement. SOFL

~~

2 - 4,

13 , 26 - 29. However , SDJ argues that both parties sell their
products on Amazon , and SDJ has begun selling at less expensive
retailers like Kohl ' s , JCPenney , and Ulta , while Apollo now
sells i n Walmart . COFL

~~

13 , 26 , 116. The parties also disagree

on whether their products cater to different age ranges and
price points . SOFL

~~

15 , 31 ; COFL

~

31 . This is a clear factual

dispute that should be held for trial .
iv.

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 ."
Juicy Couture , Inc . v . L ' Oreal USA , Inc. , 2006 WL 1012939 , at
*23 (S . D. N. Y. 2006) . This factor does not apply here, as both
parties sell body creams and are in the same market .
v.

Actual Confusion

" Evidence of actual confusion may consist of anecdotal or
survey evidence. " Paco Sport , Ltd . v . Paco Rabanne Parfums , 86
F . Supp . 2d 305 , 319 (S . D. N. Y. 2000)

(citing Centaur

Communications , Ltd . v . A/S/M Communications , Inc. , 830 F . 2d
1217 , 1227 (2d Cir . 1987)) . Apollo argues that SDJ has no
admissible evidence of actual confusion , as the evidence it has
produced is lacking specificity and may be inadmissible hearsay .
18

Apollo Liab. Mem . at 34 - 35 ; SOFL

~~

49 - 50. However, SDJ outlines

a range of different evidence that it plans to present at trial,
including written inquiries from consumers seeking to purchase
NUTRIUS® BRAZILIAN BODY BUTTER CREAM from SDJ, questions about
whether SDJ manufactures NUTRIUS® BRAZILIAN BODY BUTTER CREAM,
comments on social media confusing the two products , Costco ' s
return history , and survey evidence . SDJ Liab . Mem. at 29-32;
COFL

~~

123-28 . It is well established that evidence of actual

confusion is not "admitted for the truth of the matter asserted"
but as " probative of the declarant ' s confusion" and is therefore
not hearsay . See Fun-Damental Too , 111 F . 3d at 1003-04. Genuine
disputes of material fact exist here , and the jury is in the
best position to weigh the evidence.
vi .

Good Faith

In assessing good faith , courts consider whether a
defendant adopted its mark "with the intention of capitalizing
on plaintiff ' s reputation and goodwill and any confusion between
his and the senior user ' s product." Nora Beverages, 269 F . 3d at
124 . Apollo argues that it " did not intend to capitalize on
SDJ ' s reputation or goodwill, or to cause confusion ," and it
cites to its prominent placement of the NUTRIUS® logo on its
product . SOFL

~~

11, 19 . However , SDJ counters that Apollo has

"created an enormous paper trail evidencing otherwise ," citing
evidence that Costco ' s head buyer was a fan of SDJ ' s product and
19

wanted to capitalize on its name recognition and create similar
packaging . SDJ Liab . Mem . at 28 ; COFL

~~

107 - 09 , 113 - 14 , 116 .

Clear factual disputes exist here that are best left to the
jury .
vii . Quality

" Under this factor a court first examines whether
defendant ' s products or services are inferior to plaintiff ' s ,
thereby tarnishing plaintiff ' s reputation if consumers confuse
the two . " Morningside Grp . Ltd . v . Morningside Cap . Grp .,
L . L . C ., 182 F . 3d 133 , 142 (2d Cir . 1999 ) . Apollo argues that
SDJ ' s CEO and corporate designee testified that SDJ has no
opinion on the quality of NUTRIUS® BRAZILIAN BODY BUTTER CREAM,
meaning this factor is uncontested . SOFL

~

17 . However , SDJ

claims that it is contested ; Ms . Yang simply testified that she
had "no comment " on the quality , and , while SDJ did not spend
time testing the formulation , there is evidence that a
substantial number of purchasers returned NUTRIUS® BRAZILIAN
BODY BUTTER CREAM to Costco due to rashes or allergic reactions .
COFL

~

17 . This creates a dispute of material fact for the jury .
viii.

Sophistication

The final Polaroid factor is consumer sophistication .
"Generally , the more sophisticated and careful the average
consumer of a product is , the less l ikely it is that
similarities in trade dress or trade marks will result in
20

confusion concerning the source or sponsorship of the product."
Bristol - Myers Squibb Co. v. McNeil - P.P . C., Inc., 973 F.2d 1033,
1046 (2d Cir. 1992). The parties agree that SDJ's purchasers are
knowledgeable about beauty brands , but they disagree as to the
sophistication of Apollo ' s consumers. SOFL

~~

18 , 32; COFL

~~

18 , 32. SDJ states that its witness "merely speculated that
[Apollo's customers]

'probably' were sophisticated" but did not

have firsthand knowledge. SDJ Liab. Mem . at 40; COFL

~~

18, 32 .

While those facts may weigh against confusion, questions remain
for the jury . Additionally , "when there is a strong likelihood
of confusion created by other factors , even a high level of care
exercised by an ordinary purchaser in a certain setting will not
be sufficient to tip the scales in t he other direction ." 3 J .
Thomas McCarthy , McCarthy on Trademarks and Unfair Competition§
23 : 95 (5th ed. 2024) .
Clear disputes across almost every Polaroid factor
demonstrate that summary judgment is inappropriate on likelihood
of confusion. The two trade dresses at issue here are not "so
dissimilar that no question of fact is presented," and summary
judgment is denied . Best Cellars , 320 F. Supp. 2d at 73 . The
question of liability for trade dress infringement is preserved
for trial.
2. Trademark Infringement

21

Section 32(1) of the Lanham Act prohibits trademark
infr i ngement and imposes liability on any person who , without
the consent of the registrant, uses in commerce any copy of a
registered mark in connection with the sale , offering for sale,
distribution , or advertising of any goods for which such use is
likely to cause confusion . 15 U.S . C . § 1114(1) (a) .
To prevail on a claim for trademark infringement ,

"a

pla i ntiff must show , first , that its mark merits protection ,
and , second , that the defendant's use of a similar mark is
likely to cause consumer confusion ." Int'l Info. Sys . Sec .
Certification Consortium , Inc . v . Sec . Univ . , LLC , 823 F . 30 153 ,
160 (2d Cir . 2016). Consumer confusion can arise "not just as to
source , but also as to sponsorship, affiliation or connection."
Int ' l

Info . Sys ., 823 F . 3d at 161 . Additionally ,

possibility of confusion is not enough .

" the mere

[A] plaintiff must prove

a probability of confusion .. . affecting numerous ordinary
prudent purchasers ." Tiffany
F.3d 74 , 84

(2d Cir . 2020)

&

Co. v . Costco Wholesale Corp ,

971

(internal quotations and citations

omitted) .
To determine whether an alleged infringement is likely to
cause confusion , courts in this Circuit also apply the eightfactor balancing test from Polaroid explained above . Analysis of
most of the Polaroid factors is the same for trade dress
infringement and trademark infringement . Specifically , the
22

Court 's earlier analyses of sophistication , quality , bridging
the gap, proximity , good faith , and actual confusion apply with
equal force to trademark infringement , and genuine disputes of
material fact exist for all of the factors except bridging the
gap . The Court therefore need only examine the two Polaroid
factors that are specific to the marks at issue , strength and
similarity of the marks .
i.

Strength of the Mark

Apollo argues that the BRAZILIAN BUM BUM CREAM trademark is
descriptive and generic, as the cream contains products sourced
from Brazil and is meant to be used on one's buttocks. SOFL

~~

10, 21-22. SDJ counters that the mark is not descriptive, as the
product is not made in Brazil and can be used all over one's
body . COFL

~~

10 , 21-22 , 77. Additionally, SDJ argues that it is

suggestive , as it "evokes a beauty aspiration bikini - clad Brazilian women -

of confident,

that requires imagination to

connect it to the product." SDJ Liab . Mem . at 43. When SDJ
applied to register its similar mar k , BRAZILIAN BUM BUM, the
USPTO examiner accepted that the ma r k was suggestive and allowed
registration without proof of secondary meaning . COFL

~~

86 - 87 .

Clearly , factual disputes exist here that should be heard by the
jury.

ii.

Similarity of the Marks

23

Apollo argues that BRAZILIAN BUM BUM CREAM and NUTRIUS®
BRAZILIAN BODY BUTTER CREAM are not confusingly similar . They
reference different body parts (buttocks versus entire body) ,
and both the SDJ and NUTRIUS® house marks are displayed
prominently to avoid confusion . SOFL

~~

10 - 11 , 20 - 24 . Their

shared terms , "Brazilian " and " Cream ," are descriptive and
~~

generic in the body cream market . Id .

9- 10 , 20 - 23 . SDJ

counters that the overall impression of the two marks is quite
similar , as they " begin and end with the same words that both
frame an alliterative repetition of short words beginning with
' B . '" . SDJ Liab . Mem . at 44 - 45; COFL

~

118 . These are factual

questions that are best left to the jury .
There are factual disputes across almost all of the
Polaroid factors , making summary judgment on SDJ ' s trademark
infringement counterclaim inappropriate .
3. Contributory Trade Dress Infringement and New York Common
Law Unfair Competition

SDJ also brings counterclaims for contributory trade dress
and trademark infringement and New York common law unfair
competition.

In its briefing, Apollo argues that, if the Court

dismisses SDJ ' s trade dress and trademark infringement claims ,
it should dismiss the remaining counterclaims as well . See Info.
Superhighway , Inc. v . Talk Am. , Inc., 395 F . Supp. 2d 44, 56
(S . D. N. Y. 2005)

(dismissing state unfair competition claim upon

24

dismissal of Lanham Act claims because the " elements necessary
to prevail on common law causes of action for trademark
infringement and unfair competition mirror Lanham Act claims " )
Since those claims were not dismissed , and Apollo submitted no
additional briefing on the matter, SDJ ' s remaining counterclaims
may proceed to trial .
Partial Summary Judgment on Damages

Apollo also moves for partial summary judgment dismissing
two of SDJ ' s damages theories: prospective corrective
advertising and reasonable royalties

(0kt . No 167) . Those claims

are dismissed.
1. Prospective Corrective Advertising Damages

Under a theory of prospective corrective advertising ,
"damages may be awarded to a plaintiff even absent any evidence
that a plaintiff made corrective advertising expenditures to
remedy the harm caused by a defendant's trademark infringement."
Kargo Glob .,

Inc . v . Advance Mag . Publishers ,

2258688 , at *2 , n . 2 (S . D. N. Y. Aug.

Inc ., 2007 WL

6 , 2007). This is "an

extraordinary remedy ." Lurzer GMBH v . Am . Showcase , Inc. , 75 F .
Supp. 2d 98 , 101

(S . D. N. Y. 1998)

(internal quotations and

citations omitted) . "[N]o court in this Circuit has ever awarded
damages under that theory." Kargo Glob ., Inc. , 2007 WL 2258688 ,
at *2, n . 2 .

25

Prospective corrective advertising has two legal
requ ir ements . First , the trademark owner must prove lost
profits , lost sales , or reputational damage . See Juicy Couture ,
Inc . v. L ' Oreal USA , Inc ., 2006 WL 1359955 , at *2

(S . D. N. Y. May

18 , 2006) . Second , prospective corrective advertising is
"reserved for cases in which a plaintiff lacks the financial
ability to pay for reparative ads ." Lurzer GMBH , 75 F . Supp . 2d
at 10 1. And " where a p l aintiff co u ld afford corrective
advertising , but did not conduct such a campaign ," it may
indicate t ha t

it was in fact not injured . Juicy Couture , 2006 WL

1359955 , at *2 .
SDJ could have afforded a corrective advertising campaign
but did not engage in one . Apollo began selling its product over
twenty - four months ago , but SDJ has spent nothing on corrective
advertising . SOFD ! 4 . Two of Apollo ' s damages experts , Tom
Gorowsky and Brian Buss , reviewed SDJ ' s financial information
and concluded that SDJ has the financial resources to pay for
corrective advertising . Id . ! 5 . SDJ has not produced expert
reports to rebut that . Id . ! 6 ; SDJ ' s Rule 56 . 1 Counterstatement
o f Materi a l Fac t s on Damages (" COFD " ) ! 6 (Dkt . No . 228) .
Instead , SDJ argues that there is no financial requirement
for prospective corrective advertising damages in this District ,
as the Second Circuit has not yet decided the issue. SDJ ' s
Memorandum in Opposition to Summary Judgment on Damages (SDJ
26

Dam. Mem.) at 13

(Dkt. No 237). SDJ cites decisions in the

Seventh, Eighth, Ninth, and Eleventh Circuits holding that there
is no such requirement.
335 F.3d 633,

640-41

Id.; See Zelinski v. Columbia 300,

(7th Cir. 2003); Lawn Managers,

Progressive Lawn Managers,

Inc.,

959 F.3d 903,

2020); Adray v. Adry-Mart,

Inc., 76 F.3d 984,

1995), as amended on denial of reh'g
v. Health-Chem Corp.,

(Feb.

513 F.3d 1229, 1241

914

Inc.,

Inc. v.

(8th Cir.

988-89

(9th Cir.

15, 1996); Aronowitz
(11th Cir. 2008).

However, courts in the Southern District of New York ha v e
routinely adopted the Tenth Circuit's test from Big O Tire
Dealers v. Goodyear Tire & Rubber Co.,

561 F.2d 1365, 1375

(10th

Cir. 1977), which held that, although a plaintiff "did not spend
any money prior to trial," prospective corrective advertising
damages were proper because the plaintiff "did not have the
economic resources to conduct an advertising campaign." See
Lurzer GMBH,

75 F. Supp. 2d at 101; Juicy Couture,

2006 WL

1359955, at *1-2; Mastercard Int'l v. Arbel Corp.,

1989 WL

125781, at *8

(S.D.N.Y. Oct. 18, 1989); Playtex Prod.,

Procter & Gamble Co., 2003 WL 21242769, at *8
2003), aff'd, 126 F. App'x 32

Inc. v.

(S.D.N.Y. May 28,

(2d Cir. 2005). Just last August,

Judge Subramanian dismissed a claim for prospective corrective
advertising damages where there was no proof of payments for
repair of any injury. See Makina Ve Kimya Endustrisi A.S. v.

27

A . S . A. P. Logistics Ltd ., 2024 WL 3638054 , at *13 - 16 (S.D.N.Y.
Aug. 2 , 2024)

(slip opinion).

There is no factual dispute as to SDJ's ability to afford
corrective advertising , and beyond the absence of any need for
damage - correcting payments , the period as a whole was a
profitable one for SDJ . SDJ ' s claim for $37.7 million in
prospective corrective advertising damages is dismissed .
2. Reasonable Royalty Damages

SDJ also seeks $1.15 million in reasonable royalty damages .
Apollo argues that there is no basis for awarding those damages
and moves for summary judgment . The Court agrees, and that claim
is dismissed .
Reasonable royalties are a "seldom- used method for
computing trademark damages" and are typically "limited to
situations where the parties have had a trademark licensing
relationship that facilitates computation of the reasonable
royalty damages . " The Apollo Theater Found ., Inc. v . W. Int ' l
Syndication, 2005 WL 1041141 , at *13 (S . D. N.Y . May 5 , 2005).
" [W]hen the courts have awarded a royalty for past trademark
infringement , it was most often for continued use of a product
beyond authorization , and damages were measured by the license
the parties had or contemplated . " Juicy Couture , 2006 WL
1359955 , at *4

(quoting A & H Sportswear , Inc. v . Victoria's

Secret Stores , Inc . , 166 F.3d 197, 208-09 (3d Cir . 1999))
28

(excluding expert testimony on reasonable royalties where the
parties did "not have a previous licensing arrangement on which
to base an award for royalty payments," and the expert's
calculations were "speculative"). "Otherwise, courts have granted
royalty awards for trademark infringement only where the
evidence provides a sufficiently reliable basis from which to
calculate that award." Focus Prod. Grp.
Sales Co.,

647 F. Supp. 3d 145, 258

Int'l, LLC v. Kartri

(S.D.N.Y. 2022 )

(internal

quotations and citations omitted). Typically, that is where the
parties "have a history of negotiating and concluding licensing
agreements governing the Trademark" at issue. Apollo Theater,
2005 WL 1041141, at *13; see also Makina,

2024 WL 3638054, at

*8-11 (dismissing reasonable royalty claim on summary judgment
where "there was no prior licensing agreement contemplated by
the parties" and "no sufficiently reliable basis on which to
calculate a royalty," and excluding expert testimony that was
"speculative and ill-explained").
Here, both parties agree that they had no prior licensing
arrangement; SDJ never licensed its trademarks or trade dress to
Apollo or Costco or even engaged in discussions to do so. SOFD
17; COFD

~

17. In fact,

SDJ's CEO specifically testified that

SDJ would "never sell" its product at Costco, and SDJ has never
licensed its trademark or trade dress rights to any other third
party. SOFD

~

17. The facts here do not align with the
29

~

traditional case for reasonable royalties, and there is no
"sufficiently reliable basis from which to calculate that
award." Focus Prod., 647 F. Supp. at 258. SDJ's claim for
reasonable royalty damages is dismissed.
CONCLUSION

For the foregoing reasons, all questions related to
Apollo's liability for trade dress and trademark infringement
are preserved for trial, and SDJ's claims for prospective
corrective advertising damages and reasonable royalty damages
are dismissed.
So ordered.
Dated:

New York, New York
October LJ, 2024

b,,;,5 L; s ~

LOUIS L. STANTON
U.S.D.J.

30