EVERLINA & LAURICE CO v. BRIZEL et al
MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE EDUARDO C. ROBRENO ON 11/25/13. 11/26/13 ENTERED AND COPIES EMAILED(rf, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
EVERLINA LAURICE HARP,
LAURICE EL BAHDRY RAHME, et al.,
M E M O R A N D U M
EDUARDO C. ROBRENO, J.
November 25, 2013
Table of Contents
I. BACKGROUND and PROCEDURAL HISTORY .......................... 3
II. LEGAL STANDARD ............................................. 9
A. Summary Judgment Standard................................. 9
B. Scope of “Uncontested” Facts............................. 11
A. Defendants’ Motion for Summary Judgment.................. 13
1. Infringement of, or Unfair Competition with, Plaintiff’s
trademarks “Everlina & Laurice” or “Laurice” (Counts 1-2, 4)
a. The Evidence of Record as to each Lapp Factor ........ 17
i. Similarity between Plaintiff’s and Defendants’ marks
(Lapp Factor 1) ........................................ 17
ii. Strength of Plaintiff’s “Everlina & Laurice” and
“Laurice” marks (Lapp Factor 2) ........................ 21
iii. Price and other factors indicating care and attention
of consumers in purchasing the parties’ products (Lapp
Factor 3) .............................................. 27
iv. Length of time Defendants have used “Laurice & Co.”
without evidence of actual confusion by consumers (Lapp
Factor 4) .............................................. 28
v. Intent of Defendants in adopting the “Laurice & Co.”
mark (Lapp Factor 5) ................................... 29
vi. Evidence of actual confusion by consumers (Lapp Factor
vii. ...... Channels of trade and advertising media used by
Plaintiff and Defendants (Lapp Factor 7) ............... 33
viii. .. Plaintiff’s and Defendants’ Target Consumers (Lapp
Factor 8) .............................................. 34
ix. Relationship of Plaintiff’s and Defendants’ products
in the minds of consumers (Lapp Factor 9) .............. 35
x. Evidence of converging markets (Lapp Factor 10)..... 37
b. Balancing the Ten Lapp Factors ....................... 37
2. Counterfeiting Plaintiff’s trademarks (Count 3) ........ 38
3. Dilution of Plaintiff’s trademarks (Count 5) ........... 40
4. Intentional Interference with Plaintiff’s Actual and
Prospective Business Relations (Count 6) .................. 43
5. Civil Conspiracy (Count 7) ............................. 45
B. Plaintiff’s Cross Motion for Summary Judgment............ 46
IV. CONCLUSION ................................................ 48
Currently pending in this case is a motion for summary
judgment filed by Defendants Laurice El Badry Rahme (“Rahme”),
Laurice El Badry Rahme, Ltd. (“Rahme Ltd.”), and Saks Fifth
Avenue Enterprises (“Saks”) (collectively, “Defendants”), and a
“Counterclaim,” which the Court construes as a cross motion for
summary judgment, filed by Plaintiff Everlina Laurice Harp
(“Plaintiff”). The factual record is sparse in this case but the
material facts are uncontested. Plaintiff’s allegations do not
form a basis for any of the legal claims she asserts.
Accordingly, the Court will grant Defendants’ motion for summary
judgment as to all counts and will deny Plaintiff’s motion for
summary judgment as to all counts.
BACKGROUND and PROCEDURAL HISTORY
Since 1994, Plaintiff1 has been in the business of
developing, marketing, distributing, selling, and promoting
jewelry-cleaning services, polishing products, perfume products,
soaps, and lotions. See Am. Compl. ¶ 10, ECF 36. Plaintiff
applied for a trademark to establish her brand identity in April
1994. Id. ¶ 12. The United States Patent and Trademark Office
registered her trademark, “Everlina Laurice,” on January 1,
1997. Id.2 Since this time, Plaintiff has traded under the names
“Everlina Laurice,” “Everlina,” and “Laurice.” Id. ¶ 13.
On February 12, 2004, Defendant Rahme Ltd. filed a petition
to cancel the registration of trademark “Everlina Laurice.” See
Pl.’s Resp. Mot. Dismiss 11, Aug. 14, 2012, ECF No. 49. Rahme
Ltd. also sought to register the mark “Laurice” for perfumes,
colognes, and room fragrances but its application was denied.
See Defs.’ Reply, Ex. A, 1-3, ECF No. 88-2.3 Rahme Ltd. then
As Plaintiff is proceeding pro se the Court will liberally construe
her pleadings under the applicable law. Higgins v. Beyer, 293 F.3d 683, 688
(3d Cir. 2002).
It should be noted that there is a discrepancy in dates. Plaintiff
states that her trademark was registered on January 9, 1997, but the exhibit
attached to her complaint suggests that she filed her registration on January
9, 1997 but that registration was not complete until May 26, 1998. See Pl.’s
Amend. Compl., Ex. A, Registration of Pl.’s “Everlina Laurice” trademark. For
the purposes of evaluating Defendants’ motion for summary judgment, the Court
will construe all dates in the light most favorable to Plaintiff, and
therefore will proceed under the assumption that Plaintiff’s trademark was
registered on January 9, 1997. In any case, the exact date that Plaintiff’s
“Everlina Laurice” mark was registered is not material to the disposition of
It is unclear from Plaintiff’s complaint and the exhibits that
Plaintiff has filed on what date this occurred.
withdrew its petition to cancel. See Am. Compl., Ex. C, Def.
Rahme’s Withdrawal of Petition to Cancel Pl.’s trademark.
In a letter dated April 5, 2012, Plaintiff contacted Saks
regarding the sale of perfumes with the “Laurice & Co.” mark in
Saks’s department stores. Id., Exs. B1-B2. Plaintiff stated that
Defendant Saks’s use of the “LAURICE” mark in connection with
the sale of Defendant Rahme Ltd.’s Bond No. 9 perfume line
constituted trademark infringement, as such use was likely to
cause confusion with Plaintiff’s registered “EVERLINA LAURICE”
and common law “LAURICE™” marks. Id., Ex. B1. Saks did not
respond to Plaintiff’s letter and did not cease sales and
marketing of the alleged infringing product. Id. ¶ 16. In an
apparent further attempt to protect her original mark, Plaintiff
obtained an additional registered trademark for the name
“LAURICE” on June 12, 2012. Id., Ex. D.
Plaintiff now brings this action for trademark infringement
and related claims against Defendants, seeking both monetary
damages and injunctive relief. Plaintiff filed an amended
complaint on July 9, 2012 (ECF No. 36), asserting the following
seven counts against all Defendants:
Violation of the Lanham Act through Defendants’ use of
the names “Everlina,” “Laurice,” and “Everlina & Laurice”
in connection with the sale of Bond No. 9 perfume;
Violation of the Lanham Act through Defendants’ use of
the name “Laurice” in connection with a business not
affiliated with Plaintiff;
Violation of the Trademark Counterfeiting Statute;
Common Law Unfair Competition;
Violation of the Federal Trademark Dilution Act;
Intentional Interference with Actual and Prospective
Business Relations; and
Between July and November of 2012 Defendants moved to
dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6),
or, in the alternative, for a more definite statement. See Def.
Saks’s Mot. Dismiss, ECF No. 40; Def. Rahme’s Mot. Dismiss, ECF
No. 69. Plaintiff filed several responses to these motions. See
Pl.’s Resp. Mot. Dismiss, Aug. 14, 2012; Pl.’s Resp. Mot.
Dismiss, Nov. 15, 2012, ECF No. 71. A hearing was held on
December 3, 2012 to consider the Defendants’ pending motions. At
the hearing the Court determined that the case turns in large
part on whether Plaintiff actually alleges facts constituting
trademark infringement and if so what products that infringement
attaches to. The Court therefore concluded that a fuller factual
record was warranted. See Hr’g Tr., 25:12-25:15, Dec. 3, 2012,
ECF No. 81. Defendants’ motions to dismiss were denied and the
Court issued a new scheduling timeline, directing Defendants to
file any motion for summary judgment within 30 days.
Pursuant to the Court’s order, Defendants filed a motion
for summary judgment on January 2, 2013 alleging that the
material facts related to this case are not in dispute and that
as a matter of law each of Plaintiff’s claims fail. Central to
this motion is Defendants’ contention that “Laurice & Co.” has
only been used as a business or trade name and never as a
trademark. See Defs.’ Mot. Summ. J., ECF No. 83.
Also on January 2, 2013, Defendant Rahme submitted to the
Court a declaration with numerous attached exhibits representing
her use of “Laurice & Co.” as a trade name in conjunction with
the sales of her line of over 60 perfumes. See Decl. Laurice El
Badry Rahme, ECF No. 84. Rahme’s attachments include a
certificate of incorporation of “Laurice El Badry Rahme Ltd.,”
issued in 1989, and a certificate of assumed name of “Laurice &
Co.,” dated May 30, 1995. See Decl. Laurice El Badry Rahme, Exs.
B and C, ECF No. 84-1. The attachments also illustrate “Laurice
& Co.” stickers that the parties referred to at the December 3,
2012 hearing. It appears that either a sticker or printed label
located on the bottom or back of each of Defendants’ products
features: in large cursive type, “Bond No. 9,” and underneath,
in smaller print, “NEW YORK,” the name of the specific perfume,
such as “PARK AVENUE,” or “CHINATOWN,” and finally, “LAURICE & CO. LTD,
New York, NY, 10012.” See generally Decl. of Laurice El Badry
Rahme, Exs. F – YY (images of Defs.’ product labels), ECF No.
Plaintiff’s response,4 filed on January 30, 2013, reiterates
the conclusory statements that Defendants’ use of “Laurice &
Co.” amounts to trademark infringement and unfair competition,
that Defendants’ ownership of the domain name
“www.lauriceco.com” diverts Plaintiff’s customers,5 and that the
United States Patent and Trademark Office’s denial of Defendant
Rahme Ltd.’s application to trademark “Laurice & Co.” because of
likely confusion with Plaintiff’s “Everlina & Laurice” mark
provides evidence of likelihood of confusion. See Pl.’s Resp.
Mot. Summ. J., Jan. 30, 2013, ECF No. 86.
Plaintiff also filed a short document on January 30, 2013,
labeled “Counterclaim” which the Court construes as a cross
motion for summary judgment. See Pl.’s Counterclaim, ECF No. 87.
This submission largely duplicates Plaintiff’s assertions in her
response to Defendants’ Rule 56 motion. Specifically, Plaintiff
Plaintiff did not argue that she needed discovery in order to reply to
the motion for summary judgment. See Fed. R. Civ. P. 56(d). In fact, she
filed a counterclaim, which the Court construes as a cross motion for summary
judgment, based on the facts of record. See Pl.’s Counterclaim, ECF No. 87.
Plaintiff appears to be suggesting in her response an alternative
infringement theory by claiming that Defendants’ use of the domain name
“www.lauriceco.com” constitutes an infringement with Plaintiff’s trademark of
“Laurice.” Pl.’s Resp. Mot. Summ. J., Ex. W, ECF No. 86-6. Plaintiff does not
put forth any evidence or suggest that Defendant is using this domain name to
market perfume. However, Plaintiff has provided a print out from
“register.com” that suggests that the domain name is owned by Defendant
Laurice & Co., and that this ownership impedes Plaintiff’s use of the
“Laurice” mark. See id., Ex. W3, ECF No. 86-6.
again argues that “Laurice” is an “extremely strong mark on the
Trademark registry,” that Defendants’ ownership of the
“www.lauriceco.com” domain name infringes with Plaintiff’s
trademark rights, that a comparison the parties’ marks shows a
likelihood for confusion, and that Defendants are intentionally
and maliciously trying to harm Plaintiff. Id.
Defendants filed a memorandum in reply to Plaintiff’s
response and a counterclaim to Defendants’ Rule 56 motion (ECF
Nos. 86, 87) arguing that Plaintiff’s submissions are “improper
in form and substance and should be given no consideration.”
Defs.’ Reply, 3, ECF No. 88. Defendants argue that Plaintiff
does not refute any of Defendants’ statements of fact. Id. at 2.
Furthermore, Defendants argue that because Plaintiff’s
submissions fail to address any of Defendants’ assertions of
fact, these facts should be considered undisputed. Id. at 3
(citing Fed. R. Civ. Pro. 56(e); Fabral, Inc. v. B & B Roofing
Co., Inc., 773 F. Supp. 2d 539, 542-43 n. 4 (E.D. Pa. 2011)).
Additionally, Defendants characterize Plaintiff’s submissions in
opposition as merely “repeat[ing] her prior bare assertions and
conclusory allegations.” Defs.’ Reply 3, 4. In their reply
Defendants also include exhibits that document the 2004
application by Defendants of a trademark for the “Laurice & Co.”
mark. See generally Defs.’ Reply, Exs. A – D, ECF Nos. 88-2 –
Summary Judgment Standard
Summary judgment is appropriate “if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R. Civ.
P. 56(a). “A motion for summary judgment will not be defeated by
‘the mere existence’ of some disputed facts, but will be denied
when there is a genuine issue of material fact.” Am. Eagle
Outfitters v. Lyle & Scott Ltd., 584 F.3d 575, 581 (3d Cir.
2009) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247-48 (1986)). A fact is “material” if proof of its existence
or nonexistence might affect the outcome of the litigation, and
a dispute is “genuine” if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.”
Anderson, 477 U.S. at 248.
The Court will view the facts in the light most favorable
to the nonmoving party. “After making all reasonable inferences
in the nonmoving party’s favor, there is a genuine issue of
material fact if a reasonable jury could find for the nonmoving
party.” Pignataro v. Port Auth. of N.Y. & N.J., 593 F.3d 265,
268 (3d Cir. 2010). While the moving party bears the initial
burden of showing the absence of a genuine issue of material
fact, meeting this obligation shifts the burden to the nonmoving
party who must “set forth specific facts showing that there is a
genuine issue for trial.” Anderson, 477 U.S. at 250.
Although the moving party bears the burden of demonstrating
the absence of a genuine issue of material fact, in a case such
as this, where the nonmoving party is the plaintiff and bears
the burden of proof at trial, the nonmoving party must present
affirmative evidence sufficient to establish the existence of
each element of his case. Id. at 306 (citing Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986)). Where a plaintiff fails to
point to “sufficient cognizable evidence to create a material
issue of fact ‘such that a reasonable jury could find in its
favor,’” then summary judgment may be awarded to a moving
defendant. See Perez v. New Jersey Transit Corp., 341 Fed. App’x
757, 760 (3d Cir. 2009) (not precedential) (citing McCabe v.
Ernst & Young, LLP, 494 F.3d 418, 424 (3d Cir. 2007)); see also
Zilich v. Lucht, 981 F.2d 694, 696 (3d Cir. 1992) (stating that,
to avoid an unfavorable summary judgment, a pro se plaintiff
bears the burden of producing evidence “such that a reasonable
jury could return a verdict [in his favor]”) (citations
omitted). The nonmoving party may survive a motion for summary
judgment by presenting direct or circumstantial evidence and
that evidence “need not be as great as a preponderance,” though
it must be “more than a scintilla.” McCabe, 494 F.3d at 424
(citing Hugh v. Butler County Family YMCA, 418 F.3d 265, 267 (3d
Scope of “Uncontested” Facts
In their legal memorandum and reply in support of motion
for summary judgment, Defendants ask the Court to regard the
material facts set forth in their motion as uncontested in spite
of Plaintiff’s response and “counterclaim.” See Defs.’
In support of this request, Defendants cite a “generally
accepted proposition that all facts not specifically denied by
the nonmoving party are deemed admitted.” Defs.’ Reply, 3, ECF
No. 88. Because Plaintiff’s responses “are improper in form and
substance,” Defendants argue, those submissions should be given
no consideration. Id.
Defendants correctly note that though courts are to view
facts and inferences in the light most favorable to the
nonmoving party, a nonmoving plaintiff cannot rely on
unsupported assertions, speculation, or conclusory allegations
to avoid the entry of summary judgment. Rather, a plaintiff
“must go beyond pleadings and provide some evidence that would
show that there exists a genuine issue for trial.”
United Parcel Serv., 214 F.3d 402, 407 (3d Cir. 2000); see also
Celotex, 477 U.S. at 324 (“[N]onmoving party [must] go beyond
the pleadings and . . . designate ‘specific facts showing that
there is a genuine issue for trial.’” (citing Fed. R. Civ. Pro.
56(e)); Kirleis v. Dickie, McCamey & Chilcote, P.C., 560 F.3d
156, 161 (3d Cir. 2009) (“Conclusory, self-serving [statements]
are insufficient to withstand a motion for summary judgment.
Instead, the [party] must set forth specific facts that reveal a
genuine issue of material fact.” (citations omitted)).
Consequently, the Court will not recognize disputes of
material fact based solely on conclusory statements that are not
substantiated by specific allegations of fact or evidence on the
record. Plaintiff’s pro se status does not eliminate her
obligation to allege specific facts, substantiated by evidence
on the record. See Benckini v. Hawk, 654 F. Supp. 2d 310, 316 n.
1 (E.D. Pa. 2009) (While they are held to “less stringent
standards,” pro se litigants are nevertheless “not permitted to
totally ignore all rules and standards.” (quotations omitted)).
However, to deny any consideration to Plaintiff’s submissions
due to deficiencies in formatting would conflict with the policy
of construing liberally the submissions of pro se parties.
Therefore, the Court finds that inadequacies in the form of
Plaintiff’s responses to the pending motion for summary judgment
will not preclude the Court from considering these submissions,
as well as the record as a whole.
A. Defendants’ Motion for Summary Judgment
Defendants argue that no disputes of material fact exist in
the instant case and that Defendants are entitled to summary
judgment on each of Plaintiffs’ claims as a matter of law.
The Court considers Plaintiff’s trademark infringement and
unfair competition claims (Counts 1-2, 4) together, as all three
turn on a common question of “likelihood of confusion.” The
Court will then consider individually each of Plaintiff’s
1. Infringement of, or Unfair Competition with, Plaintiff’s
trademarks “Everlina & Laurice” or “Laurice” (Counts 12, 4)
Plaintiff asserts that Defendants’ use of the “Laurice &
Co.” mark infringes upon Plaintiff’s registered trademarks,
“Everlina & Laurice” (Count 1) and “Laurice” (Count 2), in
violation of the Lanham Act, and further that Defendants’ use of
the infringing mark constitutes unfair competition in violation
of Pennsylvania law (Count 4). Amend. Compl. ¶¶ 23-24, 29, 39.
The Lanham Act (“Act”), 15 U.S.C. §§ 1051, is the
controlling federal statute for trademark infringement and
unfair competition claims. “The Lanham Act was intended to make
‘actionable the deceptive and misleading use of marks’ and ‘to
protect persons engaged in . . . commerce against unfair
competition.’” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 767-68 (1992) (quoting 15 U.S.C. § 1127). To prove either
form of Lanham Act violation, a plaintiff must demonstrate that
(1) it has a valid and legally protectable mark; (2) it owns the
mark; and (3) the defendant’s use of the mark to identify goods
or services causes a likelihood of confusion. See A & H
Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 Fed. 3d
198, 210 (3d Cir. 2000). The requirements of a Pennsylvania
unfair competition claim mirror those of a Lanham Act claim, but
without the additional federal requirement of interstate
commerce. See R.J. Ants., Inc. v. Marinelli Enterprises, LLC,
771 F. Supp. 2d 475, 489 (E.D. Pa. 2011).
The Court finds that there is no dispute that Plaintiff
owns valid and legally protected trademarks for “Everlina &
Laurice” and “Laurice,” fulfilling the first two prongs of the
infringement and unfair competition tests. See Pl.’s Amend.
Compl., Ex. A, Registration of Pl.’s “Everlina Laurice”
trademark, ECF No. 36; id., Ex. D, Registration of Pl.’s
“Laurice” trademark. Therefore, the Court must proceed to
examine whether Plaintiff has pointed to sufficient evidence of
record of a likelihood of confusion of the parties’ products
from which a reasonable jury could find for Plaintiff on the
infringement and unfair competition analysis.6
Defendants assert that they are entitled to summary judgment pursuant
to Rule 56 because the undisputed factual record shows that “Laurice & Co.”
has only been utilized as a trade or business name, not a trademark, and thus
“To prove likelihood of confusion, plaintiffs must show
that ‘consumers viewing the mark would probably assume the
product or service it represents is associated with the source
of a different product or service identified by a similar
mark.’” Checkpoint Sys., Inc. v. Check Point Software Techs.,
Inc., 269 F.3d 270, 280 (3d Cir. 2001) (quoting Scott Paper Co.
v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir.
1978)). The Third Circuit has recognized a non-exhaustive list
of ten factors, sometimes referred to as the “Lapp factors,”
after the foundational case Interpace Corp. v. Lapp Inc., 721
F.2d 460 (3d Cir. 1983), that may be considered when determining
whether a likelihood of confusion exists. The Lapp factors are:
(1) the degree of similarity between the owner’s mark
and the alleged infringing mark;
(2) the strength of the owner’s mark;
(3) the price of the goods and other factors
indicative of the care and attention expected of
consumers when making a purchase;
(4) the length of time the defendant has used the mark
without evidence of actual confusion arising;
negates the likelihood of confusion element required in Plaintiff’s various
trademark infringement and unfair competition claims. See Defs.’ Mem. in
Support of Mot. Summ. J., 6-8, ECF No. 83-1. The court agrees that the use of
“Laurice & Co.” as a trade name rather than a trademark is a relevant
consideration when evaluating likelihood of confusion, but rejects the
suggestion that such a distinction is dispositive. While the use of Laurice &
Co. in the context of a trade name may suggest that consumer confusion
between the parties’ products is less likely, the inquiry does not end there.
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods . . . are marketed through the
same channels of trade and advertised through the same
(8) the extent to which the targets of the parties’
sales efforts are the same;
(9) the relationship of the goods in the minds of
consumers because of the similarity of function; [and]
(10) other facts suggesting that the consuming public
might expect the prior owner to manufacture a product
in the defendant’s market, or that he is likely to
expand into that market.
A & H Sportswear, 237 F.3d at 211 (citing Lapp, 721 F.2d at
463); see also Freedom Card, Inc. v. JPMorgan Chase & Co., 432
F.3d 463, 469 (3d Cir. 2005).
“None of these factors is determinative in the likelihood
of confusion analysis and each factor must be weighed and
balanced one against the other.” Checkpoint Sys., 269 F.3d at
280. The Third Circuit has indicated that when balancing of the
ten Lapp factors, a fact-finder “determine[s] whether in the
totality of the circumstances marketplace confusion is likely.”
Checkpoint Sys., 269 F.3d at 297 (citing A & H Sportswear, 237
F.3d at 215; Fisons Horticulture, Inc. v. Vigoro Indus., Inc.,
30 F.3d 466, 476 n. 11 (3d Cir. 1994)).
The Court will proceed to examine each Lapp factor
a. The Evidence of Record as to each Lapp Factor
i. Similarity between Plaintiff’s and Defendants’ marks
(Lapp Factor 1)
The Third Circuit has recognized that “[t]he single most
important factor in determining likelihood of confusion is mark
similarity.” A & H Sportswear, 237 F.3d at 216 (citing Fisons,
30 F.3d at 476). “‘[U]nless the allegedly infringing mark . . .
is substantially similar to the protectable mark . . . , it is
highly unlikely that consumers will confuse the product sources
represented by different marks.”
Checkpoint Sys., 269 F.3d at
281 (citing Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd.,
50 F.3d 189, 202 (3d Cir. 1995)).
“Marks ‘are confusingly similar if ordinary consumers would
likely conclude that [the two products] share a common source,
affiliation, connection or sponsorship.’” A & H Sportswear, 237
F.3d at 216 (quoting Fisons, 30 F.3d at 476)). In determining
The Court notes two different approaches to applying the Lapp factors
in the context of deciding a motion for summary judgment. In Kinbook, LLC v.
Microsoft Corp., 866 F. Supp. 2d 453 (E.D. Pa. 2012), the court went factor
by factor, evaluating whether evidence on the record allowed a reasonable
jury to weigh each factor for or against a finding of likelihood of
confusion. By contrast, in Chase Manhattan Bank, USA, N.A. v. Freedom Card,
Inc., 333 F. Supp. 2d 239 (D. Del. 2004), the court applied each Lapp factor
separately before determining whether, on balance, there was sufficient
evidence from which a reasonable jury could find a likelihood of confusion.
The Court finds that the approach taken in Chase Manhattan Bank provides a
clearer path in this case. In any event, under either approach, the result in
this case would be the same.
whether marks are similar, a court can consider whether the
marks “‘create the same overall impression when viewed
separately.’” Id. (quoting Fisons, 30 F.3d at 476).8 In assessing
the degree of similarity between two marks, a court should
“compare the appearance, sound and meaning of the marks . . . to
determine whether the average consumer, on encountering one mark
in [the] isolated circumstances of [the] marketplace and having
only [a] general recollection of the other, would likely confuse
or associate the two.” Checkpoint Sys., 269 F.3d at 281
In considering similarity of appearance between parties’
marks, courts have looked to the visual characteristics such as
the layout and format of lettering. See, e.g., A & H Sportswear,
237 F.3d at 217 (affirming two marks as visually distinct based
on differing fonts and cases used in the lettering of each);
R.J. Ants, 771 F. Supp. 2d at 490 (finding two marks visually
distinct because of the respective arrangement of words, the
inclusion of quotation marks in one mark and not the other, the
other words included in one mark and not the other, and the
different illustrations included in the two marks).
In the instant case, the record compels that Defendants’
use of the mark “Laurice & Co.” is dissimilar from Plaintiff’s
In fact, where the two products in question are generally not sold
side-by-side, a court should endeavor to “move into the mind of the roving
consumer.” A & H Sportswear, 237 F.3d at 216 (citing Ciba-Geigy Corp. v.
Bolar Pharm. Co. Inc., 747 F.2d 844, 851 (3d Cir. 1984)).
use of the “Everlina & Laurice” and “Laurice” marks.9 First, the
visual appearance of Defendants’ mark is distinct, as it appears
in a small typeface, located on the back or bottom of
Defendants’ products. See Am. Compl., Ex. I2 (showing
Defendants’ product packaging bearing “LAURICE & CO.” label);
see generally, Decl. of Laurice El Badry Rahme Exs. F – YY
(showing Defendants’ product packaging bearing “LAURICE & CO.”
By contrast, Plaintiff’s trademarks appear prominently
on Plaintiff’s products and generally are featured in large, at
times cursive, type. See Am. Compl., Exs. I1, I2 (showing vials
of Plaintiff’s perfumes prominently bearing the “EVERLINA” and
“LAURICE” marks in black, all capital type); Pl.’s Resp. Mot.
Dismiss 7-8, Nov. 15, 2012 (showing Plaintiff’s “Everlina
Laurice” mark in cursive type).
In considering the “sound” of the marks at issue, courts
have looked at the number of words and syllables, as well as the
Plaintiff points the United States Patent and Trademark Office’s
reasoning in denying Defendant Rahme’s application to register “Laurice” as a
trademark, that it was too similar and thus likely to be confused with
Plaintiff’s “Everlina & Laurice” mark in the sale of perfumes and beauty
products. Pl.’s Resp. Mot. Summ. J., Ex. I10, U.S. Patent and Trademark
Office Action, ECF No. 86-2.
The Court finds the outcome of Rahme’s trademark application relevant
but not dispositive to the question of likelihood of confusion or the subquestion of similarity between Plaintiff’s and Defendants’ marks. The
Trademark Office determined that if Defendant began using “Laurice & Co.” as
a trademark it would create a likelihood of confusion with Plaintiff’s marks.
However, he Trademark Office did not consider whether Defendants are
currently using “Laurice & Co.” as a trademark or whether their use of the
mark creates a likelihood of confusion with Plaintiff’s trademarks.
Furthermore, there is no evidence that the United States Patent and Trademark
Office uses the same standard in evaluating likelihood of confusion as is
required in the context of an infringement suit in federal court.
use of different words or syllables, in each mark. See, e.g., A
& H Sportswear, 237 F.3d at 217 (affirming two marks were
distinct in sound based on the fact that the two marks had
different numbers of syllables and that the last syllable of
each mark was different); R.J. Ants, 771 F. Supp. 2d at 490
(finding that two marks created different auditory impressions
because one mark included eight syllables ending with the word
“Philadelphia” and the other mark included fourteen syllables
ending with the word “Bakery”).
Plaintiff’s and Defendants’ marks possess different sounds,
as Defendants’ mark includes the additional words “and Company”
not included in Plaintiff’s “Everlina Laurice” and “Laurice”
marks. Also, Plaintiff’s marks possess six or two syllables and
end with the word “Laurice,” while Defendants’ mark possesses
seven syllables and ends with the word “Company.” Accordingly,
just as the Third Circuit found two marks to be distinct in A &
H Sportswear, based on a different number of syllables and
ending sounds in each, the undisputed record in this case
indicates that Plaintiff’s and Defendants’ marks are
distinguishable. See 237 F.3d at 217.
In considering the meaning of parties’ marks, courts have
looked to whether the words included in each mark, viewed as a
whole, gave the mark a different denotative or connotative
meaning. See, e.g., A & H Sportswear, 237 F.3d at 217; R.J.
Ants, 771 F. Supp. 2d at 491. In the instant case, the
connotative meaning of Defendants’ mark appears to comply with
an industry standard indicating the source or manufacturer of
the product. See Hr’g Tr., 4:15-25, Dec. 3, 2012. Plaintiff’s
marks seem to carry the meaning of a brand line, indicating that
Plaintiff’s various products come from the same brand or source.
See, e.g., Pl.’s Resp. Mot. Dismiss, Ex. C, Nov. 15, 2012
(showing Pl.’s products for sale in a retail setting under the
“Everlina Laurice” line). In addition, Plaintiff’s “Laurice”
mark appears to be used as the name of a particular perfume
product. See Pl.’s Amend. Compl., Ex. I1 (showing a vial of
Pl.’s “Laurice” perfume product), ECF No. 36.
Even construing the undisputed factual record in the light
most favorable to Plaintiff, dissimilarities in appearance,
sound, and meaning between the parties’ marks cause this factor
to weigh against a finding of likelihood of confusion.
ii. Strength of Plaintiff’s “Everlina & Laurice” and
“Laurice” marks (Lapp Factor 2)
The second factor that may be considered in determining
likelihood of consumer confusion is the strength of the
plaintiff’s mark. Plaintiff asserts that her trademark
“‘Laurice’ is an extremely strong mark” because only two
registrations with the wording “Laurice” appear in the U.S.
Trademark registry. See Pl.’s Resp. Mot. Summ. J., Ex. S3, ECF
No. 86-5. However, even assuming that Plaintiff’s factual
assertions are true, the lack of other trademarks using the term
“Laurice” is not dispositive of the question of the strength of
Plaintiff’s marks. The Third Circuit defines a “strong”
[O]ne that carries widespread, immediate recognition that
one producer (even if unknown) is associated with the mark,
and so with the producer . . . [such that] [i]f a second
comer adopts a mark substantially identical to [the] strong
mark, there is a correspondingly high likelihood that
consumers will mistakenly associate the newcomer’s product
with the owner of the strong mark.
Checkpoint Sys., 269 F.3d at 282 (quoting Versa Prods., 50 F.3d
at 204). In determining the strength of a mark, the Third
Circuit has repeatedly applied a two-prong test of “(1) the
distinctiveness or conceptual strength of the mark; and (2) the
commercial strength or marketplace recognition of the mark.” A &
H Sportswear, 237 F.3d at 221 (quotations omitted); see also
Fisons, 30 F.3d at 478-79.10
The Court notes that the analysis and relevance of the strength of
Plaintiff’s mark would be different if Plaintiff were raising a “reverse
confusion” claim, which occurs where a smaller, more senior, mark owner
claims that a more widely publicized junior mark is flooding the market and
therefore will confuse consumers and cause them to misattribute the senior,
smaller mark holder’s products as coming from the larger, junior mark holder.
See A & H Sportswear, 237 F.3d at 229, 230. Though Plaintiff in the instant
case appears to be the smaller and senior mark holder, her complaint is
clearly framed in terms of direct confusion, as she is concerned that
Defendants are unfairly profiting from customers who believe that products
Prong 1: Distinctiveness or Conceptual Strength
In evaluating distinctiveness or conceptual strength of a
mark, a court should place the mark in one of four
classifications: “generic,” “descriptive,” “suggestive,” and
“arbitrary or fanciful.” A & H Sportswear, 237 F.3d at 221-22
(citing Two Pesos, 505 U.S. at 768). However, this
classification is not dispositive; a court may also look at
other factors relevant to strength, such as the extent to which
part of the mark is used by other entities within the market or
whether the mark is used in connection with several different
products. Id. at 222. Additionally, a court may consider whether
the mark has acquired a secondary meaning, such that the mark
has become synonymous with a plaintiff’s product in the mind of
Generally, personal names fall in the descriptive category
and are not considered inherently distinctive or strong
trademarks, making evidence that such marks has acquired
secondary meaning particularly relevant. See Brown & Brown, Inc.
bearing the “Laurice & Co.” mark are actually coming from Plaintiff’s
company, Everlina Laurice. See Amend. Compl. ¶¶ 24-26, 29-30 (“The
Defendants’ use of the name LAURICE in connection with a business not
affiliated with the Plaintiff misrepresents the services offered by the
Defendants by implying that such services are the same as those offered by
the Plaintiff.”); Hr’g Tr., 13:15-21, Dec. 3, 2012, (“Each of [Defendant
Rahme’s] 68 different [products] has Laurice, which are[sic] supposed to
identify [Plaintiff], not [Defendant Rahme]. . . . It is a commercial
impression and [Defendant Rahme] will be recognized as [Plaintiff] if that
continues.”). The distinction between reverse and direct confusion claims is
particularly relevant for the “strength of mark” Lapp factor, because under a
reverse confusion claim, the relative weakness of a plaintiff’s mark would
actually weigh in that plaintiff’s favor. See A & H Sportswear, 237 F.3d at
v. Cola, 745 F. Supp. 2d 588, 611 (E.D. Pa. 2010). In measuring
when a personal name has acquired secondary meaning, a court
should look to whether “the name and the business it is
associated with [have] become synonymous in the public mind” and
whether “the secondary meaning submerges the primary meaning of
the name as a word identifying a person, in favor of its meaning
as a word identifying that business.” Id. (citing AFL
Philadelphia LLC v. Krause, 639 F. Supp. 2d 512, 526 (E.D. Pa.
2009)). In making this showing, the plaintiff mark holder “must
not only show that [the personal name] [is] used . . . as a
trademark, but that a substantial portion of the consuming
public associates the name specifically with its business.” Id.
(citations omitted); see also AFL Philadelphia, 239 F. Supp. 2d
at 526; Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312,
321-22 (E.D. Pa. 2006). But see Scarves by Vera, Inc. v. Todo
Imports Ltd., 544 F.2d 1167, 1173 (2d Cir. 1976) (finding that a
personal name, “Vera,” constituted a strong mark, where the
owner’s “sales figures,” “advertising expenditures,” and “many
articles written about [the owner]” “established that [owner’s]
trademark was highly successful and widely recognized in the
medium-high fashion industry.”).
In the present case it is uncontested that Plaintiff’s two
marks (“Everlina Laurice” and “Laurice”) and the relevant
portion of Defendants’ mark (“Laurice”) are personal names, the
names of the Plaintiff and Defendant Rahme. See Hr’g Tr., 2:184:1, May 1, 2012, ECF No. 8; Hr’g Tr., 17:22-35, May 18, 2012,
ECF No. 20; Decl. of Laurice El Badry Rahme, Ex. A (Defendant
Rahme’s scanned U.S. passport), ECF No. 84-1.
Plaintiff asserts in her complaint that her marks have come
to be associated by her customers with her product line such
that the marks carry an inherent second meaning of association
with her products. See Pl.’s Resp. Mot. Summ. J. 3,
(“[P]laintiff is in the habit of labeling her [products] with
distinctive mark [sic] so that purchasers recognize goods thus
marked as being of Plaintiff[sic] production.”). However, no
evidence has been submitted on the record to prove the existence
of this association. In addition, the uncontested material facts
of this case show that Plaintiff’s marks containing her personal
name are applied on a wide range of different kinds of products.
See id. (stating that Plaintiff uses her marks on products
including “shower gels,” “[l]otion,” “perfume,” “[b]ody wash,”
and “[f]ragrence [o]ils”); Hr’g Tr., 10:19-22, Dec. 3, 2012.
a result, even considering the facts in the light most favorable
to the Plaintiff, it is clear that the personal names in
Plaintiff’s marks have not led to a “substantial portion of the
consuming population” to associate these names specifically with
Plaintiff. Brown & Brown, 745 F. Supp. 2d at 611. Although
Plaintiff’s trademarks may be legally protected, she has failed
to provide any evidence that her marks are inherently strong.
Prong 2: Commercial Strength
When applying the second prong of the Fisons test, courts
determine the commercial strength of a plaintiff’s mark by
considering factual evidence regarding recognition of that mark
in the marketplace, such as “money expended on advertising,
trends in purchasing, or other indicators of recognition by
consumers.” Strike Holdings LLC v. UC Strikes, LLC, 2005 WL
1799412, at *6 (E.D. Pa., July 28, 2005) (citing A & H
Sportswear, 237 F.3d at 224); see also Commerce Nat’l Ins.
Servs., Inc. v. Commerce Ins. Agency, Inc., 213 F.3d 432, 440
(3d Cir. 2000). In the instant case, Plaintiff has made no
assertions about the type or scale of advertising used to
further recognition of her trademarks.11 The uncontested facts on
this matter are limited, showing only that Plaintiff is a small
business owner with a website. Even considering these facts in
the most favorable light, Plaintiff has failed to provide any
evidence showing strong commercial association of her trademarks
and her business.
Plaintiff asserts that she is a “nationally known wholesaler and
retailer” of a line of beauty and cleaning products and “advertises
extensively via trade shows, personal appearances, print advertisements,
nationally-broadcast infomercials, and through the internet.” Pl.’s Amend.
Compl. ¶ 11. However, the evidentiary record corroborating these claims is
limited to references to Plaintiff’s website and images that appear to depict
the sale of Plaintiff’s jewelry-cleaning products and services, under the
Everlina Laurice name, in a booth at an unidentified date and shopping mall
setting. See Pl.’s Resp. Mot. Dismiss, Exs. C-E, Nov. 15, 2012.
Under the circumstances, the relative weakness of
Plaintiff’s trademarks weighs against finding a likelihood that
consumers will confuse Defendants’ mark with Plaintiff’s.
iii. Price and other factors indicating care and
attention of consumers in purchasing the parties’
products (Lapp Factor 3)
The third factor to consider in determining whether
consumer confusion is likely is the expected care and attention
of consumers when purchasing a product with Plaintiff’s mark.
See Checkpoint Systems, 269 F.3d at 284. This factor involves
consideration of the price of the products at issue, the
sophistication of the segment of the market purchasing the
products at issue, and/or other evidence suggesting a heightened
level of scrutiny by a purchaser. See, e.g., R.H. Ants, 771 F.
Supp. 2d at 494 (“The amount of care and attention given to a
purchasing decision increases proportionately as the costs of
the goods or services increase”).
In the instant case the parties have made no specific
representations about the sophistication of their clientele,
apart from the generally uncontested facts that the perfume
products bearing Defendants’ mark are sold at retail boutiques
and “luxury department stores such as Saks Fifth Avenue,” see
Decl. of Laurice El Badry Rahme ¶ 8, ECF No. 84, whereas
Plaintiff’s products bearing the “Everlina Laurice” and
“Laurice” are sold at regional venues including “flea markets”
and through her website. See Hr’g Tr., 10:23-24, Dec. 3, 2012.
Additionally, though the parties have failed to specifically
point to the price of their various products, the uncontested
factual record indicates that Plaintiff’s products range in
price from approximately $13 - $70 per item,12 while Defendants’
perfume and related products have suggested retail prices of $75
- $230.13 The undisputed record includes facts—the high price and
luxury sales setting of Defendants’ products—which usually
suggest a high level of care and attention by purchasers of
these goods. Plaintiff has provided no rebuttal evidence
suggesting that consumers do not use a high level of care and
attention in purchasing Defendants’ goods. Accordingly, this
factor weighs against finding a likelihood of confusion.
iv. Length of time Defendants have used “Laurice &
Co.” without evidence of actual confusion by
consumers (Lapp Factor 4)
The fourth factor to be considered in determining whether
consumer confusion is likely is the length of time during which
the defendant has used the allegedly offending mark without
evidence of actual confusion arising therefrom. When parties
with allegedly similar marks have coexisted over many years with
See Decl. of Marie Skioryak, Ex. 3, sales invoice of Pl.’s perfume
ECF No. 72-1; Decl. of Elizabeth Elfeld, Ex. 2, sales invoice of Pl.’s
jewelry-conditioner, perfume, and skincare products ECF No. 72-2.
See Defs.’ Mot. Dismiss, Ex. A, sales invoice of Defs.’ various
products, ECF No. 69-2.
no evidence of actual confusion, there is a strong inference
that the marks or names at issue are not likely to cause
consumer confusion. See Versa Prods., 50 F.3d at 204-05 (“If a
defendant’s product has been sold for an appreciable period of
time without evidence of actual confusion, one can infer that
continued marketing will not lead to consumer confusion in the
future. The longer the challenged product has been in use, the
stronger this inference will be.”); see also Fisons, 30 F.3d at
It is uncontested that Defendant Rahme Ltd. has used the
mark “Laurice & Co.” since at least 1995, when a Certificate of
Assumed Name was filed in New York State, see Decl. of Laurice
El Badry Rahme, Ex. C, ECF No. 84-1, while Plaintiff has used
the marks “Everlina Laurice” and “Laurice” since at least 1994.
See Pl.’s Amend. Compl., Exs. A, Registration of Pl.’s “Everlina
Laurice” trademark; id., Ex. D, Registration of Pl.’s “Laurice”
trademark. The record shows that the parties have simultaneously
used their respective marks for seventeen years without
incidents of actual consumer confusion. Accordingly, this factor
weighs against finding a likelihood of consumer confusion.
v. Intent of Defendants in adopting the “Laurice & Co.”
mark (Lapp Factor 5)
The fifth factor to consider in determining likelihood of
consumer confusion is whether the defendant has intended to
confuse consumers by using a mark purposefully manipulated to
resemble the plaintiff’s mark. A & H Sportswear, 237 F.3d at 226
(citing Versa Prods., 50 F.3d at 205-06). Additionally, “some
degree of bad faith is also relevant to the selection of an
appropriate remedy,” as the “intent to copy, without more, is
not sufficiently probative of the defendant’s success in causing
confusion to weight such a finding in the plaintiff’s favor.”
Id. at 225-26.
In the instant case Plaintiff has suggested that Defendants
acted maliciously by continuing to utilize the “Laurice & Co.”
mark despite its alleged infringement of Plaintiff’s trademarks.
Amend. Compl. ¶ 21; Pl.’s Resp. to Mot. Summ. J., Ex. I5, ECF
86-2 (stating that Defendants’ conduct has been “malicious,”
“deliberate, and willful”). However, Plaintiff has not alleged
or provided any factual evidence suggesting that Defendants
selected or manipulated the “Laurice & Co.” mark in order to
cause confusion with Plaintiff’s products. To the contrary, the
uncontested record suggests that the parties were unaware of one
another at the time that they began using their respective
marks. Moreover, Defendant Rahme, whose first name is “Laurice,”
appears to have begun using the contested mark in good faith, in
order to have a business name that reflected her personal name.
Therefore, because Plaintiff has provided no evidence that
Defendants adopted the “Laurice & Co.” mark with the intention
to cause confusion between the parties’ products, this factor
weighs against finding a likelihood of confusion.
vi. Evidence of actual confusion by consumers (Lapp
The sixth factor to be considered in determining likelihood
of confusion between Defendants’ and Plaintiff’s marks is
whether evidence exists of actual confusion between the parties’
marks. The Third Circuit has clarified that some evidence of
customer confusion between the parties’ products is not
dispositive of the question of actual confusion, particularly if
that confusion is “isolated and idiosyncratic.” A & H
Sportswear, 237 F.3d at 227. “‘[O]wnership of a trademark does
not guarantee total absence of confusion on the marketplace,”’
particularly where the mark involves a “common surname.” Id.
(quoting Scott Paper, 589 F.2d at 1231). The Third Circuit has
directed district courts to use their discretion to weigh the
individual facts of a case and determine whether a pattern of
confusion has occurred. Id.; see also Scott Paper, 589 F.2d at
1231 (describing the inquiry as a search for a “pattern of
confusion in the marketplace.”).
In the instant case Plaintiff has presented two allegations
of actual confusion, though the evidentiary record to support
either is sparse.
First, Plaintiff asserts, but provides no evidence, that
she has received mail at her address that was meant for
Defendants. See Hr’g Tr., 15:11-12, Dec. 3, 2012. This evidence
could suggest that individual customers may have mistaken
Plaintiff for Defendants and thus inadvertently sent mail to
Plaintiff. However, even viewed in the light most favorable to
Plaintiff, this evidence is insufficient to prove a pattern of
confusion between Plaintiff’s and Defendants’ trademarks. In
Scott Paper, the Third Circuit upheld a finding of no actual
confusion where a plaintiff pointed to misdirected letters and
phone calls as evidence of actual confusion of the parties’
marks. 589 F.3d at 1231. In that case, which involved two marks
based on a common surname, the Circuit Court noted that some
risk of uncertainty was inevitable and that evidence of
misdirected mail alone was insufficient to prove actual
confusion. Id. Even if Plaintiff provided actual evidence that
she received misdirected mail intended for the Defendants due to
public confusion between the parties’ marks, this evidence would
be insufficient, on the scale alleged, to prove a pattern of
Second, Plaintiff contends that Defendants own the domain
name “www.lauriceco.com” and that, by refusing to release that
address, Defendants cause Plaintiff’s customers to become
confused and diverted away from Plaintiff’s own website. Pl.’s
Resp. Mot. Summ. J. 4; Hr’g Tr., 19:1-3, May 18, 2012.
Plaintiff presents no evidence that Defendants actually use the
“www.lauriceco.com” website or that the existence of the domain
name has, even anecdotally, affected traffic on Plaintiff’s
website. Also, Plaintiff does not claim that the domain name is
used to advertise Defendants’ products.
The record in this case, even viewed in the light most
favorable to Plaintiff, contains no evidence that Plaintiff’s
allegations of misdirected mail and diverted web traffic amount
to a pattern of actual consumer confusion regarding the “Laurice
& Co.” mark. Therefore, this factor weighs against a finding a
likelihood of confusion between the parties’ marks.
vii. Channels of trade and advertising media used by
Plaintiff and Defendants (Lapp Factor 7)
The seventh factor to consider in determining likelihood of
consumer confusion is whether the goods bearing the marks at
issue are marketed through the same channels of trade and
advertised through the same media. “[T]he greater the similarity
in advertising and marketing campaigns, the greater the
likelihood of confusion.” Checkpoint Systems, 269 F.3d at 288,
289 (citations omitted). In evaluating this factor, courts
should consider the “media the parties use in marketing their
products as well as the manner in which the parties use their
sales forces to sell their products to consumers.” Id. at 289.
Neither party in the instant case has provided evidence of
the channels and scope of advertising and sales strategies used
to market their respective products. It is uncontested that the
parties each maintain a website for online sales. See Pl.’s
Resp. Mot. Summ. J. 4; Decl. of Laurice El Badry Rahme ¶ 8, ECF
No. 84. Additionally, it is uncontested that Defendants’
products are sold at Saks Fifth Avenue and individual boutique
locations, while Plaintiff’s products are sold through retail
locations including flea markets.14 Therefore, the evidence
presented in this case does not indicate a strong similarity
between the advertising and marketing campaigns of the two
parties—or any similarity at all apart from the very general
fact that both parties make online sales through their
respective websites. For this reason, this dissimilarity in
marketing and advertising weighs against a finding of likelihood
of confusion between the parties’ marks.
Plaintiff’s and Defendants’ Target Consumers
(Lapp Factor 8)
The eighth factor to be considered in determining
likelihood of consumer confusion is whether the “parties target
their sales efforts to the same consumers.” Checkpoint Systems,
As noted above, Plaintiff asserts that she is a “nationally known
wholesaler and retailer,” and “advertises extensively via trade shows,
personal appearances, print advertisements, nationally-broadcast
infomercials, and through the internet.” Pl.’s Amend. Compl. ¶ 11. However,
evidence of Plaintiff’s physical retails sales is limited to images depicting
Plaintiff selling jewelry-cleaning products at a booth in a mall or flea
market setting. See Pl.’s Resp. Mot. Dismiss, Ex. C-E, Nov. 15, 2012.
269 F.3d at 289 (“[W]hen parties target their sales efforts to
the same consumers, there is a stronger likelihood of
confusion.”). The parties have not made specific evidentiary
representations of their respective consumer targets. However,
it appears uncontested that the parties generally cater to
different groups of consumers, as indicated by the fact that
Defendants’ products are sold in upscale retail locations and
Plaintiff’s in comparatively down-market locations. Because
Plaintiff has provided no evidence that the parties are
targeting the same consumer population, and because the
uncontested factual record suggest that the parties actually
have dramatically different customer bases, this factor weighs
against a finding of likelihood of confusion.
ix. Relationship of Plaintiff’s and Defendants’
products in the minds of consumers (Lapp Factor 9)
The ninth factor to consider in determining whether
consumer confusion is likely is the relationship of the parties’
goods in the minds of consumers. In determining the nature of
this relationship, “courts examine whether buyers and users of
each parties’ goods are likely to encounter the goods of the
other, creating an assumption of common source affiliation or
sponsorship.” Checkpoint Systems, 269 F.3d at 286 (citing
Fisons, 30 F.3d at 481). “The question is whether the consumer
might . . . reasonably conclude that one company would offer
both of these related products.” Fisons, 30 F.3d at 481. Put
another way, this analysis requires a court to consider “whether
the goods are similar enough that a consumer would assume they
were offered by the same source.” Checkpoint Systems, 269 F.3d
at 286 (citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th
Central to this dispute is the fact that both the Plaintiff
and Defendants produce and sell perfumes with the word “Laurice”
appearing on them. Making all inferences in the Plaintiff’s
favor, the Court recognizes that perfume buyers—either retailers
or individual consumers—may come across both parties’ products.
Case law in this area suggests that where a plaintiff’s product
and an allegedly infringing product perform the same or related
functions, there is potential for consumers to mistakenly
believe that both products come from a common source. See, e.g.,
Fisons, 30 F.3d at 581 (finding that plaintiff’s peat moss and
defendant’s fertilizer were used for the same common purpose of
improving soil, and thus that a consumer might reasonably
believe that both were offered by the same company).
because Plaintiff has provided evidence of possible association
between the parties’ products in the minds of consumers,15 this
However, in light of the larger body of uncontested facts previously
discussed—the drastically different prices, packaging designs, and sales
venues of these products—the Court does not find that the parties’ products
are so similar that such an association would be likely.
factor weighs in favor of a finding of likelihood of confusion
between the parties’ marks.
x. Evidence of converging markets (Lapp Factor 10)
The tenth factor that a court may consider in evaluating
likelihood of confusion between the parties’ marks is whether
there is evidence to suggest that the markets of a trademark
owner and alleged infringer overlap or are likely to converge.
See Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 724
(3d Cir. 2004). This factor is considered to be highly contextspecific. Id.
In the instant case, the parties appear to concede that
they target different segments of the marketplace, as the
undisputed facts demonstrate that their products are sold in
different venues and for different prices. Additionally, the
parties have not asserted that their markets are likely to
converge in the future. Because Plaintiff has provided no
evidence that that the parties’ markets currently overlap, or
are likely to overlap in the future, this factor, to the extent
that it is even relevant, further weighs against a finding of
likelihood of confusion.
b. Balancing the Ten Lapp Factors
In the present case it is evident and uncontested that the
parties sell the same type of product (perfume), utilize a mark
containing a common word (“Laurice”), and make some of their
sales through an online presence. However, beyond these few
general similarities, the record indicates that products bearing
the parties’ respective marks are highly distinguishable in
appearance, price, sales venue, and not least of all, because
the “Laurice & Co.” mark is used inconspicuously, as a means of
product tracking, rather than prominently, to attract buyers. In
fact, only Lapp Factor 9, relationship of Plaintiff’s and
Defendants’ products in the minds of consumers, weighs in favor
of Plaintiff’s petition; all other factors weigh against her.
After balancing the ten Lapp factors and considering the
totality of the circumstances, no reasonable jury could find any
likelihood of confusion between the parties’ marks. Therefore,
because Plaintiff has failed to produce evidence that a dispute
of material facts exists as to whether she would prevail on this
necessary element to her trademark infringement and unfair
competition claims, summary judgment in Defendants’ favor as to
Plaintiff’s Counts 1-2 and 4 is warranted.
2. Counterfeiting Plaintiff’s trademarks (Count 3)
Plaintiff has also asserted that Defendants’ use of the
“Laurice & Co.” mark on their Bond No. 9 products constitutes
counterfeiting of Plaintiff’s trademarks. See Amend. Compl. ¶¶
34-36. The Court construes this allegation, Count 3 of
Plaintiff’s amended complaint, as a claim of unlawful
counterfeiting of a registered trademark in violation of the
Lanham Act. See 15 U.S.C. §§ 1116 (d), 1127. “To establish
federal trademark counterfeiting, the record must show that (1)
the defendants infringed a registered trademark in violation of
the Lanham Act, 15 U.S.C. § 1114(1)(a), and (2) intentionally
used the trademark knowing it was counterfeit or was[sic]
willfully blind to such use.” Louis Vuitton Malletier and
Oakley, Inc. v. Veit, 211 F. Supp. 2d 567, 580-81 (E.D. Pa.
2002) (citing Playboy Enter., Inc. v. Universal Tel-A-Talk,
Inc., 1998 WL 767440, *7 (E.D. Pa., Nov. 3, 1998)); see also
Chanel, Inc. v. Gordashevsky, 558 F. Supp. 2d 532, 536 (D.N.J.
2008). In the instant case, because Plaintiff cannot establish
that Defendants’ use of “Laurice & Co.” prima facie infringes on
Plaintiff’s marks in violation of Lanham Act § 1141, Plaintiff
will also be unable to establish the first element required in
her counterfeit claim. Under these circumstances, Defendants are
entitled to summary judgment as to Count 3 of Plaintiff’s
Because the Court finds that Plaintiff cannot meet the prima facie
requirement of proof of infringement required for a counterfeiting claim, the
Court need not reach address whether evidence exists on the record that
Defendants intended or were willfully blind to possible infringement.16
However, even if Plaintiff could show an underlying infringement violation,
the Court notes that no evidence has been produced that would allow a
reasonable jury to find that Defendants intended to cause infringement, as
required by the second element of the counterfeiting violation.
3. Dilution of Plaintiff’s trademarks (Count 5)
In addition to her trademark infringement and
counterfeiting claims, Plaintiff alleges that Defendants’ use of
the “Laurice & Co.” mark “impairs” the “distinctiveness” of
Plaintiff’s “Everlina Laurice” and “Laurice” trademarks in
violation of the Federal Trademark Dilution Act, 15 U.S.C. §§
1125(c), 1127. Amend. Compl. ¶¶ 43-44.17 This cause of action
“grants extra protection to strong, well-recognized marks even
in the absence of a likelihood of consumer confusion.” Times
Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212
F.3d 157, 163 (3d Cir. 2000).
The elements of a violation of the federal dilution statute
are (1) that the plaintiff is the owner of a mark qualifying as
“famous” under the factors listed in § 1125 (c)(1); (2) that the
defendant is making commercial use in interstate commerce of a
Plaintiff refers to the Federal Trademark Dilution Act, which the
Court infers to mean the Federal Trademark Dilution Act of 1996 (FTDA), on
which the Third Circuit’s seminal case on federal dilution claims, Times
Mirror Magazines, Inc., was decided. That statute was replaced in its
entirety by the Trademark Dilution Revision Act of 2006 (TDRA). Courts within
the Third Circuit, including in the Eastern District of Pennsylvania, have
continued to apply Times Mirror Magazines, as good law, see, e.g., R.J. Ants,
771 F. Supp. 2d at 601 n.6; Steak Umm Co., LLC v. Steak ‘Em Up, Inc., 2011 WL
3679155, *8 (E.D. Pa. Aug. 23, 2011); CPC Properties, Inc. v. Dominic, Inc.,
2013 WL 4457338, *5 (E.D. Pa. Aug. 21, 2013), though a recent Eastern
District opinion notes that the Third Circuit has not fully addressed new
developments under the new law, such as “the establishment of a likelihood of
dilution standard . . . rather than an actual dilution standard; a provision
that non-inherently distinctive marks may qualify for protection; and a
reconfiguration of the factors used to determine whether a mark is famous for
dilution purposes, including a rejection of dilution claims based on ‘niche’
fame.” CPC Properties, Inc., 2013 WL 4457338, *5 n.1 (quoting Dan-Foam A/S v.
Brand Named Beds, LLC, 500 F. Supp. 2d 296, 306 n.87 (S.D.N.Y. 2007)).
mark or trade name; (3) that the defendant’s use began after the
plaintiff’s use became famous; and (4) that defendant’s use
causes dilution by lessening the capacity of the plaintiff’s
mark to identify and distinguish goods or services. See CPC
Properties, Inc., 2013 WL 4457338, *5 (citing Times Mirror
Magazine, Inc., 212 F.3d at 162).
A mark may be considered “famous,” for purposes of the
federal dilution statute, where “[the mark] is widely recognized
by the general consuming public of the United States as a
designation of the source of the goods or services of the mark’s
owner.” Xtreme Caged Combat v. ECC Fitness, 2012 WL 5893970, *6
(E.D. Pa., Nov. 21, 2012) (citing 15 U.S.C. §1125(c)(2)(A)).
Notably, federal courts have interpreted the inclusion of this
language in the revised form of the federal dilution statute to
indicate “a reject[ion] [of] dilution claims based on niche
fame, i.e. fame limited to a particular channel of trade,
segment of industry or service, or geographic region.” Dan-Foam
A/S, 500 F. Supp. 2d at 306 n.87 (citations omitted); see also
CPC Properties, Inc., 2013 WL 4457338, *5 n.1 (noting that the
revised TDRA included a “rejection of dilution claims based on
The Trademark Dilution Revision Act points to four
nonexclusive factors for a court to consider in determining
whether a mark may be deemed famous. See 15 U.S.C. § 1125
(c)(2)(A). These factors include:
The duration, extent, and geographic reach of
advertising and publicity of the mark, whether
advertised or publicized by the owner or third
The amount, volume, and geographic extent of sales
of goods or services offered under the mark;
The extent of actual recognition of the mark; [and]
Whether the mark is registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or
on the principal register.
Id. While Plaintiff has alleged that she is a “nationally known
wholesaler and retailer” of perfumes and related products, she
has presented no evidence on the record to demonstrate national
distribution, let alone national recognition, including no
evidence of the extent or geographic reach of advertising or
sales, or actual consumer recognition of Plaintiff’s mark. Pl.’s
Amend. Compl. ¶ 11. Therefore, the Court finds that Plaintiff
has failed to produce sufficient evidence from which a
reasonable jury could find Plaintiff’s marks “famous” or that
Defendants’ mark caused dilution within the meaning of § 1125
(c). As such, the Court will grant summary judgment in
Defendants’ favor as to Count 5 of Plaintiff’s amended
4. Intentional Interference with Plaintiff’s Actual and
Prospective Business Relations (Count 6)
Plaintiff’s Sixth Count asserts that Defendants have
purposefully interfered with Plaintiff’s existing and
prospective business relations, causing a substantial loss of
existing business and diversion of a substantial portion of
prospective business. Amend. Compl. ¶¶ 47-48. The Court
understands this allegation to refer to the Defendants’ use of
the “Laurice & Co.” mark and ownership of the www.lauriceco.com
This claim is governed by Pennsylvania state law, where the
tort of intentional interference with business relations is
defined by four elements:
(1) the existence of a contractual,18 or prospective
contractual, relation between the complainant and a third
party; (2) purposeful action on the part of the defendant,
specifically intended to harm the existing relation, or to
prevent a prospective relation from occurring; (3) the
absence of privilege or justification on the part of the
In adopting this standard, Pennsylvania courts have drawn on a
similar standard for intentional interference with contractual relations. See
Sylk v. Bernsten, 2003 WL 1848565, *7 (Pa. Ct. C.P., Feb. 4, 2003).
defendant; and (4) the occasioning of actual legal damage
as a result of the defendant’s conduct.
Pawlowski v. Smorto, 403 Pa. Super. 71, 78 (Pa. Super. Ct.
1991); see also Al Hamilton Contracting Co. v. Cowder, 434 Pa.
Super 491, 497 (Pa. Super. Ct. 1994).
While Pennsylvania state courts have applied the
contractual relation standard to business relation causes of
action, it does not appear necessary that a complaint for
intentional interference with business relations actually
alleges the existence of an existing or prospective contract.
However, Pennsylvania law requires that, when alleging “the tort
of international interference with business,” that “a business
relationship be proved with some degree of specificity, at least
to the point that future profit be a realistic expectation and
not merely wishful thinking.” Frisby v. Frankford Hosp., 2006 WL
1769618, *5 (Pa. Ct. C.P., May 23, 2006) (citing Feingold v.
Hill, et al., 44 Pa. D. & C. 3d 610, 618 (Pa. Ct. C.P., 1986));
see also Behrand v. Bell Tel. Co., 242 Pa. Super. 47, 62 (Pa.
Super. Ct. 1976).
Plaintiff’s allegations that Defendants’ use of the
“Laurice & Co.” mark and their ownership of the
“www.lauriceco.com” domain name have usurped consumer good will
and diverted business away from Plaintiff, even if proven, would
not support relief under this cause of action, which requires
evidence of specific relationships between a plaintiff and a
third party. Plaintiff has provided no evidence of specific
relationships that she maintains or has a realistic expectation
of maintaining in the future that would allow a reasonable jury
to find in her favor the necessary elements of intentional
interference with business relationships.19 Accordingly, as to
Count 6, Defendants are entitled to summary judgment.
5. Civil Conspiracy (Count 7)
In the final count of her amended complaint, Plaintiff
alleges that Defendants engaged in a civil conspiracy for the
“illegal and improper purpose” “to injure and destroy
[Plaintiff’s business] and convert and usurp [Plaintiff’s
business] [for] themselves.” Amend. Compl. ¶ 50. In
Pennsylvania, a claim of civil conspiracy requires “(1) a
combination of two or more persons acting with a common purpose
to do an unlawful act or to do a lawful act by unlawful means or
for an unlawful purpose; (2) an overt act done in pursuance of
the common purpose; and (3) actual legal damage.” Pennsylvania
Plaintiff’s submissions illustrate that at least as early as August
6, 2003, the date that Defendant Rahme’s petition to trademark “Laurice” was
denied due to likelihood of confusion with Plaintiff’s mark “Everlina
Laurice,” Defendants have known of Plaintiff’s marks and have continued to
use “Laurice & Co.” as a trade or business name on the packaging of Bond No.
9 products. See Pl.’s Resp. Mot. Summ. J., Ex. I10, U.S. Patent and Trademark
Office Action. However, Defendants’ uncontested awareness of Plaintiff’s
trademarks hardly proves that the Defendants intended to interfere with
Plaintiff’s business. Moreover, Plaintiff has not provided specific claims or
evidence of business relations, existing or prospective, that were affected
by Defendants’ action.
v. TAP Pharmaceutical Products, Inc., 36 A.3d 1112, 1114 (Pa.
Commw. Ct. 2011) (citations omitted). Additionally, “proof of
malice, or an intent to injure, is . . . an essential part of a
cause of action for conspiracy.” Id.
Plaintiff has made unsubstantiated claims that Defendants
have maliciously conspired to harm Plaintiff’s business by
continuing to use an allegedly infringing trademark. But,
Plaintiff points to no factual details or evidence of the
specific elements of civil conspiracy, such as the existence of
a common purpose between these parties or a particular intent to
injure the Plaintiff. Therefore the Court finds that, because no
reasonable jury could find in Plaintiff’s favor under this
evidentiary record, Plaintiff’s claim of civil conspiracy fails
and Defendants are entitled to summary judgment.
B. Plaintiff’s Cross Motion for Summary Judgment
In addition to her response in opposition to Defendants’
motion for summary judgment, Plaintiff has also submitted a
document, labeled “Motion to Dismiss Counterclaim” (ECF No. 83).
As noted above, the Court follows a policy of liberally
construing the submissions of a pro se plaintiff who may not be
well versed in the law. In this case, Plaintiff appears to
assert that the evidence on the record is not in dispute and
that a reasonable jury would have to find in her favor; the
Court therefore construes Plaintiff’s “Counterclaim” as a motion
asserting that no disputes of material fact exist and that
Plaintiff is entitled to summary judgment as a matter of law.20
When confronted with cross motions for summary judgment
from both sides, the Court must consider each motion separately.
See Benckini, 654 F. Supp. 2d at 315. Further, the same standard
and burdens apply on cross motions for summary judgment, as such
cross motions are “no more than a claim by each side that it
alone is entitled to summary judgment.” See id. (quoting
Transportes Ferreos de Venezuela II CA v. NKK Corp., 238 F.3d
555, 560 (3d Cir. 2001)).
While the Court must review the summary judgment motions of
each party independently, in this case both motions turn on the
same issue: whether Plaintiff has asserted sufficient specific
facts, supported by evidence on the record, that a reasonable
jury could find in her favor. Plaintiff was required to make
such a showing to survive Defendants’ motion for summary
judgment; likewise, Plaintiff would need to make this showing,
In Plaintiff’s Counterclaim, she asserts that “a reasonable jury
could return a verdict in “Plaintiff”[sic] favor,” that “concrete” evidence
favors a jury verdict for Plaintiff, and that Plaintiff “is entitled to a
verdict” from reasonable jurors based on the evidence. See Pl.’s Counterclaim
1, 2. This language suggests that Plaintiff believes that the record clearly
supports a verdict in her favor, in other words, that she, rather than
Defendants, is entitled to summary judgment. While the language in
Plaintiff’s submission does not accord perfectly with the legal standard for
a motion for summary judgment, the Court understands Plaintiff to be seeking
for such a judgment in her favor.
as a threshold matter, to prevail in her own motion for summary
Plaintiff’s Counterclaim reiterates her prior conclusory
statements: that Defendants’ actions(the ownership of the
“LauriceCo” domain name and the marketing of perfumes with the
“Laurice & Co.” mark) infringe upon Plaintiff’s own marks; that
Plaintiff’s marks are strong, as evidenced by their registration
with the U.S. Patent and Trademark Office; that consumer
confusion between Defendants’ and Plaintiff’s marks is likely;
and that Defendants’ actions represent and intentional and
malicious attempt to harm Plaintiff’s business. But, Plaintiff
again fails to point to specific uncontested facts on the record
from which a reasonable jury could find in her favor, much less
establish that an undisputed factual record exists under which a
reasonable jury would have to find in her favor. Therefore, the
Court finds that summary judgment in Plaintiff’s favor is not
For the reasons stated above, summary judgment in favor of
Defendants and against Plaintiff is warranted as to all counts
in Plaintiff’s amended complaint. Summary judgment in
To prevail in her motion for summary judgment, Plaintiff would need
to go further, demonstrating that no disputes of material fact exist and that
the uncontested facts support a finding in her favor as to each element of
her various claims. However, because Plaintiff fails to even point to
specific facts to support a prima facie case as to each count in her
complaint, the Court need not go further.
Defendants’ favor is also warranted as to Plaintiff’s cross
motion for summary judgment.
An appropriate order follows.
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