Opinion
01 Civ. 5863 (JSM)
August 15, 2001
Joseph Nicholson, Esq., Kenyon Kenyon For Plaintiff.
William Golden, Esq., Kelley Drye Warren For Defendant.
OPINION and ORDER
Becoming., Inc. ("Plaintiff") brings this action against Avon Products, Inc. ("Defendant") for false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for a declaratory judgment of infringement, and for cancellation of Defendant's BECOMING trademark (Reg. No. 1,585,259). Plaintiff also brings state law causes of action for trademark dilution and deceptive trade practices, N.Y. Gen. Bus. Law §§ 133 and 349, and a common law cause of action for unfair competition. Presently before the Court is Plaintiff's application for a preliminary injunction to-halt Defendant's launch of its "beComing" line of products, currently scheduled for mid-August 2001, and Defendant's motion to dismiss the complaint for lack of subject matter jurisdiction and for failure to state a claim under the Lanham Act. For the reasons set forth below, Plaintiff's application for injunctive relief is denied, as is Defendant's motion to dismiss the complaint.
I. BACKGROUND
In 1995, the plaintiff corporation was founded by Valerie Otto ("Otto") for the purpose of offering products specially designed for women with breast cancer. In 1996, Plaintiff began to sell its line of products through catalogs mailed to individual consumers and to doctors' offices, hospitals, and women's centers. (Vena Decl. Ex. A at 203.) Today, Plaintiff continues to sell its goods by mail order, although its last catalog was prepared for the 1997/1998 year, and through its web site, "www.becoming.com."
Plaintiff does not design or manufacture its own products, but rather sells products manufactured by others under its trade name "Becoming, Inc." (Vena Decl. Ex. A at 90-93.) Plaintiff primarily sells clothing and wigs intended for women who are currently suffering from or have recovered from breast cancer. Plaintiff also sells two skincare products bearing the trademark Carrington, one haircare product under the name Brian Joseph, a number of candles from Aromacology, two CDs of healing music, and a sterling silver angel pin. (Paradise Decl. Ex. L.) Plaintiff has recently launched a mineral supplement for women with menopause under the mark OÖNA, which is sold in conventional retail outlets.
The OÖNA vitamin bottles feature the name Becoming, Inc. in small type on the side of the bottle as a means of designating the product's distributor. (Vena Decl. Ex. A at 208-09.)
Although Plaintiff has lost money since its business began, (Vena Decl. Ex. A at 90), Plaintiff claims that its trade name and products have been featured in over 140 newspapers, on radio and television spots, and is listed in many national and state manuals as a resource for women with cancer, (Otto Decl. ¶¶ 9, 12, 14). Between January and May 2001, Plaintiff spent over $85,000 on advertising and promotional expenditures, although an unknown portion of this sum was spent on advertising the OÖNA supplement. (Otto Decl. ¶ 13; Vena Decl. Ex. A at 220-21.) Plaintiff estimates that between October 2000 and May 2001, its web site received 63,000 hits. (Otto Decl. ¶ 15.)
Defendant is a nationally known purveyor of women's beauty products, and is also active in the fight against breast cancer. While in the past Defendant primarily sold its products door-to-door, it made a decision in 1999 to expand into department store sales. These plans will reach fruition in mid-August 2001, when Defendant plans to open Avon counters in the beauty departments of J.C. Penney stores around the country. Defendant's beauty counters and the line of products sold at those counters will bear the trademark "beComing." Defendant contemplates that the becoming family of products will include cosmetics, skin care and aromatherapy products, fragrances, vitamins, and products for babies and new mothers.
Defendant's marketing campaign focuses on self-transformation, and its product groupings will include the names "becoming Radiant," "beComing Luminous," and "beComing Centered."
In or about July 2000, Defendant purchased the right to use the BECOMING mark from BC International Cosmetic Image Services, Inc. ("BeautiControl"), which registered the mark with the U.S. Patent and Trademark Office (the "PTO") in 1990 for use on dusting powder, body lotion, cologne, and bath gel (Reg. No. 1,585,259). In May 2000, Defendant filed numerous intent-to-use applications with the PTO for use of the mark BECOMING on a range of goods. Eight of these applications have been allowed by the PTO after no opposition was received during the statutory period. The products covered by the allowed applications include retail store services in the beauty care field, candles, costume jewelry, vitamin and dietary supplements, beauty seminars, and leather goods. Defendant has represented in this proceeding that it has withdrawn its intent-to-use application for the BECOMING mark on clothing. (D's Mem. Opp. Mtn. Prel. Inj. at 5 n. 4.) Defendant has also represented, and its submitted advertisements reveal, that its new product line will feature the house mark "Avon" in addition to the "beComing" mark.
BeautiControl renewed the mark in July 2000 for body lotion and cologne.
On May 24, 2001, Plaintiff filed an application with the PTO to register the BECOMING mark on clothing, wigs, body lotion, shampoo, and candles, inter alia. On July 11, 2001, Plaintiff filed an application to cancel Defendant's BECOMING mark on the basis of non-use and an allegedly fraudulent renewal.
Plaintiff here seeks to enjoin Defendant's imminent launch of its becoming line because Plaintiff claims that consumers will be confused about the origin of the parties' products, and that the size of Defendant and its product line will effectively obliterate Plaintiff's presence in the marketplace. Plaintiff claims that Defendant's active presence in the crusade against breast cancer only increases the likelihood of confusion between the two companies.
II. DISCUSSION A. Motion to Dismiss
Defendant argues that this Court lacks subject matter jurisdiction over this action because Plaintiff's Lanham Act claim is deficient. Defendant claims that it has incontestable rights to the BECOMING mark based on its acquisition of BeautiControl's interest in the mark, and therefore the only proper proceeding that Plaintiff could initiate is a cancellation proceeding before the PTO. As discussed below, the parties dispute the legitimacy of BeautiControl's mark and the assignment to Defendant. Because Plaintiff seeks to halt a nation-wide launch of Defendant's products that will allegedly infringe its trade name and trademark, this action is properly before the Court. See 15 U.S.C. § 1125. Defendant's motion to dismiss the complaint is accordingly denied.
B. Preliminary Injunction
In order to merit preliminary injunctive relief, Plaintiff must demonstrate that it is either likely to succeed on the merits of its claims or that there are sufficiently serious questions going to the merits and the balance of hardships tips in Plaintiff's favor, and that Plaintiff will be irreparably harmed by Defendant's launch of its becoming line of products. See Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122 (2d Cir. 1994). Because Plaintiff has not made the necessary showing, injunctive relief will not issue.
1. Validity of Defendant's Registration and Assignment
In order to succeed on the merits of a trademark infringement claim, plaintiff must establish proof of a valid trademark in its own product and a likelihood of consumer confusion as to the source of the competing goods. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S. Ct 2753, 2758(1992); Paddington Corp. v. Attiki Importers Distributors Inc., 996 F.2d 577, 582 (2d Cir. 1993). While registration is prima facie evidence of the validity of a mark, see 15 U.S.C. § 1057(b); Lois Sportwear, U.S.A. v. Levi Strauss Co., 799 F.2d 867, 871 (2d Cir. 1986), a plaintiff can also protect an unregistered mark or trade name by demonstrating either that it is inherently distinctive or has attained secondary meaning. See Western Publ'g Co. v. Rose Art Indus., Inc., 910 F.2d 57, 59 (2d Cir. 1990).
It is undisputed that Plaintiff began to sell its products under the trade name Becoming, Inc. in 1995, although its products do not themselves bear the "Becoming" mark. Plaintiff did not seek to register "Becoming" as a mark until 2001.
Defendant argues that even if Plaintiff could establish that its use of the mark was inherently distinctive or has attained secondary meaning, Defendant has superior statutory and common law rights to the BECOMING mark on beauty products because it purchased BeautiControl's interest in the mark in 2000. Because BeautiControl registered the mark in 1990, a valid assignment of the mark to Defendant would trump Plaintiff's right to the mark on competing products. Plaintiff responds by challenging the validity of BeautiControl's interest in the mark and the subsequent assignment to Defendant on several theories.
First, Plaintiff asserts that in the summer of 2000, BeautiControl renewed the BECOMING mark pursuant to Section 8 of the Lanham Act, 15 U.S.C. § 1058, despite the fact that Defendant had purchased the right to the mark several days earlier. (Paradise Decl. Exs. D, E.) The purpose of requiring a Section 8 renewal affidavit is to facilitate the removal of unused marks from the federal register by requiring that the affiant attest to the mark's continued use in commerce. See In re Mother Tucker's Food Experience, 925 F.2d 1402, 1404 (Fed. Cir. 1991). Section 8 was recently amended to require that the "owner" file the affidavit of continued use. In turn, Trademark Rule of Practice 2.161 provides that a renewal affidavit must be filed by the mark's owner and be accompanied by a verified declaration attesting to the mark's use in commerce. See 37 C.F.R. § 2.161. The verified declaration can be submitted by someone who has firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner. Id. Rule 2.164 states that if someone other than the owner files the renewal affidavit, the deficiency cannot be cured and the registration will be cancelled. See Id. § 2.164. Plaintiff argues that BeautiControl no longer owned the mark when it filed the renewal application, and therefore the registration is invalid and subject to cancellation.
The prior version of the statute provided that the "registrant" should file the affidavit.
The documents and testimony submitted by the parties indicate the following: On July 27, 2000, William Henri ("Henri"), Defendant's purchasing agent, bought the mark from BeautiControl. On July 28, 2000, Henri assigned the mark to Defendant. On August 8, 2000, the assignment was recorded in the PTO. (Paradise Decl. Ex. D.) On July 31, 2000, BeautiControl executed the declaration of use, and the renewal was recorded in the PTO on August 9, 2000. (Paradise Decl. Ex. E.) Thus, it appears that for whatever reason, BeautiControl filed a Section 8 renewal affidavit thirteen days after assigning the mark to Henri.
Although minor procedural irregularities in affidavits can be cured because "a minor technical defect in an affidavit . . . is a poor reason to remove an otherwise good trademark from the federal register," In re Mother Tucker's Food Exverience, 925 F.2d at 1404 (quotations omitted), a failure to comply with explicit statutory requirements cannot be cured. In In re Precious Diamonds. Inc., 635 F.2d 845, 847 (C.C.P.A. 1980), the United States Court of Customs and Patent Appeals held that a Section 8 affidavit filed by an individual, rather than by the registrant corporation, could not be cured because the statute at that time required that the "registrant" file an affidavit of use within the statutory time period. The Court held that the PTO had no discretion to ignore the explicit statutory language.
The Diamonds court noted, however, that "the term `registrant' . . . might be more broadly construed to overcome a technical defect while, at the same time, meeting the legislative purpose." 15 U.S.C. § 1127 defines "registrant" as "the legal representatives, predecessors, successors and assigns of [the] registrant." 15 U.S.C. § 1127. Accordingly, on facts somewhat similar to those here, the Trademark Trial and Appeal Board held that "affidavits of continued use filed by predecessors, successors or assigns of the registrant of record will be accepted so long as the party filing had knowledge of the continued use of the mark and the registrant of record ratifies the statements contained in the affidavit of continued use." In re Trademark Registration of Hay Acquisition Company I, Inc., 1999 TTAB LEXIS 42, at *4 (Tr. Trial App. Bd. 1999). However, because Section 8 has since been amended to provide that the "owner" must file the affidavit of use, rather than the "registrant," the continued viability of the Hay decision is in some doubt. See generally Trademark Law Treaty Implementation Act Changes, 64 Fed. Reg. 48,900, at 48,9002 (Sept. 8, 1999)
It is worth noting that the discrepancy in dates here was a mere matter of days, and it does not appear that BeautiControl was attempting to defraud the PTO. If anything, those in charge of renewing the mark may not have been informed that the mark had been sold a couple of days earlier. Moreover, the PTO accepted the Section 8 renewal and apparently did not advise BeautiControl of any deficiency. Cf. First Jewellery Co. v. Internet Shopping Network LLC, No. 99 Civ. 11239, 2000 WL 122175, at *2 (S.D.N Y Feb. 1, 2000). Although the status of the renewal affidavit is unclear in light of the PTO's general practice to strictly construe the statutory requirements of Section 8, it may be that BeautiControl would be found to have had the "implied authority" to act for Defendant.See 37 C.F.R. § 2.161. In any event, it should be remembered that cancellation of Defendant's BECOMING mark will not affect the common law rights it gained by virtue of the assignment from BeautiControl.
Plaintiff next argues that BeautiControl abandoned use of the BECOMING mark in 1998 or 1999, and therefore the mark has lost its incontestable status and is subject to attack. See 15 U.S.C. § 1115(b). A mark is deemed abandoned when its use in commerce is discontinued with an intent not to resume the use. See id. § 1127. Prima facie evidence of abandonment arises after three years of non-use, see id., although this presumption is rebuttable. See Pilates, Inc. v. Current Concerts. Inc., 120 F. Supp.2d 286, 307 (S.D.N.Y. 2000).
Plaintiff submits some evidence that BeautiControl ceased selling its Becoming products in or around October 1998, (Rose Decl. ¶¶ 4-10), although this evidence is contradicted by an officer of BeautiControl, who claims that although the products were removed from BeautiControl's catalog, they were still available from individual agents, (Groom Decl. ¶ 8). This officer also testified in her deposition that no decision to permanently discontinue the mark was ever made.
The question of BeautiControl's abandonment of the BECOMING mark raises issues of fact as to BeautiControl's continued use of the mark during the period in question, its intended plans for the mark, and other activities that will bear on the issue of intent, for example the fact that it sold the mark to Defendant for a substantial sum of money. See Defiance Button Machine Co. v. CC Metal Prods. Corp., 759 F.2d 1053, 1059-62 (2d Cir. 1985). Due to the parties' expedited briefing schedule, there has been insufficient time to develop a full record here. However, Plaintiff will bear the burden of demonstrating both non-use and BeautiControl's lack of intent to resume use of the mark in the reasonably foreseeable future.See Silverman v. CBS Inc., 870 F.2d 40, 45-47 (2d Cir. 1989).
Finally, Plaintiff asserts that the assignment from BeautiControl to Defendant was in gross and therefore invalid. A trademark can lose its protectable status when it is assigned to another without a corresponding transfer of assets or good will because use of the mark on a different product or service may act to defraud the purchasing public. See Defiance, 759 F.2d at 1059; Clark Freeman Corp. v. Heartland Co., 811 F. Supp. 137, 139 (S.D.N.Y. 1993). However, assignments in gross are not necessarily invalid. The Second Circuit has held that "[a]ssignments of marks separate from the underlying business have been upheld when the assignee is producing a product substantially similar to that of the assignor [such that] consumers would not be deceived or harmed. . . ."See Defiance, 759 F.2d at 1059 (internal quotations omitted). Thus, so long as Defendant produces goods "of the same quality and nature previously associated with the mark," the assignment will be upheld. Id.
While again there has been insufficient time to develop a full record on this issue, it is clear that Defendant's line of beComing products will include body lotion and fragrance, the items covered by BeautiControl's registration. Thus, there exists at least some degree of similarity between the two companies' products. On the other hand, the products are obviously not identical. However, it is not clear that BeautiControl's fragrances or lotions became so distinctive in the public mind that a change in their form will operate to work a fraud upon consumers of lotions and perfumes. Cf. Pepsico, Inc. v. Grapette Co., 416 F.2d 285, 289-90 (8th Cir. 1969) (holding invalid transfer of a mark for cola syrup to pepper-flavored soft drink). The possibility of deception is lessened by the fact that "Becoming" was merely one of many marks used by BeautiControl, and by the fact that Avon's house mark will appear on all beComing products. Thus, a consumer who was familiar with BeautiControl's Becoming lotion or fragrance will likely realize that the Avon product is sold by a different company. See generally Heartland, 811 F. Supp. 137; Bambu Sales. Inc. v. Sultana Crackers, Inc., 683 F. Supp. 899, 903-08 (E.D.N.Y. 1988).
It should be noted that even if Defendant's assignment is invalid, the assignment of the BECOMING mark only covered body lotion and cologne; thus, Defendant's use of the mark on cosmetics would likely be unaffected by the invalid transfer as Plaintiff never sold traditional cosmetics. This conclusion would of course be subject to a likelihood-of-confusion analysis, in particular-whether Plaintiff would have bridged the gap. Likewise, because Plaintiff never sold fragrances, the invalid assignment would not necessarily alter Defendant's right to use the mark on perfume. The only product common to both Plaintiff and Defendant that is implicated by the BeautiControl transfer is body lotion.
In light of the foregoing, Plaintiff has failed to establish that it is likely to prevail on its claim that it has priority over Defendant to use the mark "Becoming" on beauty products.
2. The Extent of Plaintiff's Protectable Interest
Even if we assume that Defendant's registration of the mark "Becoming" was invalid, it does not appear that Plaintiff will prevail on its Lanham Act claim. Section 43(a) of the Lanham Act provides protection for unregistered marks by holding liable "any person who . . . uses in commerce any word, term, name, symbol . . . or any false designation of origin" which is likely to cause confusion "as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities. . . ." The framework for considering Plaintiff's claim for trademark infringement is found in the following excerpt from the Second Circuit's decision in 20th Century Wear; Inc. v. Sanmark-Stardust, Inc, 747 F.2d 81 (2d Cir. 1984):
Success depends on whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question. This court has repeatedly held that a finding of infringement turns on an assessment of several factors including the strength of the senior user's mark, the similarity of the marks, the similarity of the products and the trade dress, actual confusion, the junior user's good faith, and the sophistication of the buyers.Id. at 86-87 (internal quotations and citations omitted).
Before examining the likelihood of confusion between the parties' products, the first question that the Court must address is whether Plaintiff's mark "is entitled to protection under the Lanham Act."Hasbro. Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir. 1988). To again quote from the Second Circuit in 20th Century Wear, Inc:
As Judge Friendly's opinion in Abercrombie Fitch, 537 F.2d 4, 9, points out, there are four different levels of trademark protection: (1) generic (not entitled to protection even with proof of secondary meaning), (2) descriptive (entitled to protection with proof of secondary meaning), (3) suggestive (entitled to protection without proof of secondary meaning), and (4) arbitrary or fanciful (enjoying the rights accorded to suggestive terms as marks — without the need of debating whether the term is merely descriptive). The difficulty, of course, lies in determining what level of protection a particular mark deserves.20th Century Wear, Inc., 747 F.2d at 87 (internal quotations and citations omitted).
Plaintiff contends that its mark is either suggestive or arbitrary and therefore entitled to protection without reference to the question of whether it has developed a secondary meaning. However, a strong argument can be made that the term "becoming" as used by Plaintiff is merely descriptive.
The line of demarcation between descriptive and suggestive marks is often difficult to determine. See Id. at 87-90. One helpful way of looking at the problem is to focus on the policy behind limiting the protection that is accorded to marks that are descriptive. As Judge Oakes observed in Papercutter, Inc. v. Fay's Drug Co., 900 F.2d 558 (2d Cir. 1990):
As to descriptive terms, "[a] person cannot, by mere adoption and use, obtain exclusive rights in words that describe the attributes of the goods, services, or business to which the words are applied" for the simple reasons that prospective purchasers are likely to understand such terms in their descriptive sense rather than as an indication of source and that the terms are likely to be useful to competing manufacturers. See Restatement (Third) of Unfair Competition § 14 comment a, at 57 (Tent. Draft No. 2 1990).Id. at 562.
Webster's dictionary defines the word "becoming" in the first instance as an adjective meaning "suitable, attractive." New Webster's Dictionary and Thesaurus 86(1992). As applied to the original products sold by Plaintiff, namely clothing and wigs designed for women who have had breast cancer, the term "becoming" is clearly descriptive because it describes the appearance of the products and the effect they will have on the wearer. With respect to the skin and haircare products that Plaintiff has added to its line, the question of whether "becoming" is descriptive or suggestive is much closer. On the one hand, it does not seem appropriate to give Plaintiff the right to prohibit other purveyors of skin and haircare products from using the common term "becoming" on their products. On the other hand, Plaintiff's use of the term "becoming" as applied to the sale of skin and haircare products seems to meet the test for a suggestive mark in that it requires "imagination, thought, and perception in order to reach a conclusion as to the nature of the goods."Russian Kurier, Inc. v. Russian American Kurier, Inc., 899 F. Supp. 1204, 1208 (S.D.N.Y. 1995).
The analysis of whether Plaintiff's use of the mark is descriptive or suggestive is complicated by the fact that Plaintiff does not affix its mark to any of the products that it sells; rather, "Becoming, Inc." is the name of the catalog and website that offers products for sale. As applied to items of clothing and personal care contained in a catalog, the term "becoming" appears more descriptive than suggestive. It is the perception of the purchasers in the marketplace "that determines whether a mark is descriptive or suggestive." Hasbro, Inc., 858 F.2d at 74. The women who receive Plaintiff's catalogs no doubt understand that they are being offered a variety of "attractive" products.
As intellectually interesting as the question may be of whether "becoming" as used by Plaintiff is descriptive or suggestive, there is no need to resolve it here. The four categories of marks — generic, descriptive, suggestive and arbitrary or fanciful — represent a spectrum of protectability, and where a particular mark falls within that continuum is but one step in an inquiry aimed at determining whether a substantial number of consumers are likely to be mislead if a second party is allowed to use the same or a similar mark. See Thompson Med. Co. v. Pfizer. Inc., 753 F.2d 208, 212-13 (2d Cir. 1985). In making this determination, the strength of Plaintiff's mark is an important consideration. As the Second Circuit noted in McGregor-Doniger, Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979): "The strength or distinctiveness of the mark determines both the ease with which it may be established as a valid trademark and the degree of protection it will be afforded." Id. at 1131; see also Narwood Prods., Inc. v. Lexington Broadcast Servs. Co., 541 F. Supp. 1243, 1249 (S.D.N.Y. 1982)
Thus, even if we assume that plaintiff's use of the mark is "suggestive," it falls so close to the "descriptive" line that it is entitled to limited protection. To put the matter another way: Given that plaintiff's mark "Becoming" is so close to the "descriptive" line, plaintiff must make a strong showing that Defendant's use of the word "beComing" in conjunction with its Avon trade name will cause substantial confusion among a significant number of consumers. This Plaintiff has failed to do.
Even were Plaintiff's mark indisputably descriptive, and therefore protectable upon a showing of secondary meaning, it should be noted that Plaintiff has not shown that its use of the "Becoming, Inc." name on its catalog or website has attained significant recognition in the marketplace for the products that Plaintiff sells. Although Plaintiff has received some media coverage over the past years, its sales have been quite low. See McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1132-33 (2d Cir. 1979) ("We see no advantage to be derived from barring judicial consideration of the realities that give content to the concept of trademark strength."). In any event, any secondary meaning that Plaintiff has attained would relate to its reputation in the breast cancer community for offering clothing and wigs.
As noted above, courts analyze the likelihood of confusion between two products by considering the well-known Polaroid factors: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the prior owner will "bridge the gap" to the new product area; (5) actual confusion; (6) the defendant's good faith in adopting the mark; (7) the quality of defendant's product; and (8) the sophistication of buyers. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).
As demonstrated above, assuming that Plaintiff's mark is suggestive, it is an extremely weak mark. In addition, while Plaintiff's "Becoming" mark and Defendant's "beComing" mark are very similar, the proximity between the parties' products is tenuous. Plaintiff primarily sells clothing and wigs intended specifically for women suffering from breast cancer. Plaintiff sells only a few body care products, and all of which bear the trademarks of other manufacturers. Plaintiff sells no products bearing the trademark "Becoming." Becoming, Inc. is only the name of the catalog and website from which products bearing other trademarks may be ordered.
As noted previously, Plaintiff's vitamin supplement, sold under the trade mark OÖNA, lists Becoming as the distributor on its label.
While Defendant's line will feature some overlapping items, including skincare products, aromatherapy products, and vitamins, it also predominantly features cosmetics and fragrance and its overall thrust is beauty care, not products targeted specifically for women with breast cancer. (Sklar Aff. ¶ 10.) See Lang v. Retirement Living Publ's Co., 949 F.2d 576, 582 (2d Cir. 1991). Moreover, Defendant's products will bear the mark "becoming" on them, but only in conjunction with its house mark Avon and only at locations where the name Avon is prominently displayed. Thus, there is not a substantial likelihood that consumers using Plaintiff's catalog or website will not understand that they are purchasing from Plaintiff, and similarly there is no likelihood that consumers purchasing Avon's beComing products will be unaware that they are purchasing an Avon product. See Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1006-08 (2d Cir. 1983) (noting that likelihood of confusion is lessened where products are targeted at different consumers and sold through different channels).
Plaintiff points to three instances of actual confusion to support its claim of consumer confusion. In one case, a woman called Plaintiff to request a job promoting Avon's new beComing line; in another case, an Avon representative sent an email to Plaintiff expressing her desire to work on products that help women with breast cancer; and in a third incident, a hotel employee called Plaintiff about some "becoming Radiant" posters that had been left behind. Although these incidents reveal some confusion on the part of the individuals involved; none of them involved consumers seeking to purchase products from either Plaintiff or Defendant. Thus, they do not evidence the type of consumer confusion protected by the Lanham Act. See Lang, 949 F.2d at 583 (finding that "no evidence link[ed] the confusion evinced by the [misdirected] calls to any potential or actual effect on consumers' purchasing decisions").
The only evidence of bad faith that Plaintiff submits is an allegation that in May or June 1998, Otto sent a press kit to Susan Kropf ("Kropf"), an officer of Avon, along with a note suggesting a possible alliance between the two companies in the breast cancer crusade. Otto claims that she followed up with a telephone call, in which she and Kropf briefly discussed the possibility of Avon purchasing a promotional product from Plaintiff in the future. Kropf says she has no memory of receiving the press kit or speaking with Otto, and that she was not involved with developing the name of Defendant's beComing line of products. (Kropf Aff. ¶¶ 3-4; Sklar Aff. ¶ 4.) This evidence alone does little to demonstrate bad faith on the part of Defendant, even if it shows that Defendant was aware of Plaintiff's trade name. See Lang, 949 F.2d at 583-84 (noting that bad faith exists where the junior user adopted its mark in order to capitalize on the senior user's reputation and goodwill).
Plaintiff argues that the primary harm it will suffer is reverse confusion, in that consumers encountering Plaintiff's products will assume that they are made by Defendant. See Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988). The Lanham Act protects against reverse confusion in order to prevent a junior user from appropriating a senior user's reputation, limiting its expansion, or causing it to lose customers. See id. The doctrine of reverse confusion thus recognizes the danger that a junior user's products may tarnish the image of the senior user's products, see Plus Products, 722 F.2d at 1003-04, or that consumers may view the senior user as an unauthorized infringer of the junior user's products, thus "injur[ing] [the senior user's] reputation and impair[ing] its good will," Banff, 841 F.2d at 490. Plaintiff does not specify a particular harm that it will suffer from Defendant's launch, but instead broadly asserts that Defendant's becoming line will destroy its business and obliterate its identity.
The fact that Plaintiff's products are specifically geared toward women with breast cancer, along with the fact that Plaintiff sells its products exclusively by mail order and through its website, undercuts the argument that reverse confusion will arise. Indeed, Plaintiff's pool of consumers is women who either have had breast cancer or are recovering from the disease. It seems unlikely that a consumer of Plaintiff's products will be confused into thinking that Avon's splashy beauty line consisting of "fragrance elixirs" and "glistening sticks" is the source of Plaintiff's products. It seems even less likely that a potential consumer's purchasing decision will be affected by the existence of Defendant's line. As noted above, to the extent that there is overlap between the parties' products, Plaintiff's skincare, haircare, and candles form a minor portion of its overall product line and moreover, they bear the marks of other manufacturers.
Plaintiff acknowledges this fact when it criticizes a survey conducted by Defendant for failing to target women in the breast cancer community as the relevant consumers of Plaintiff's products. The examples of newspaper articles submitted by Plaintiff which have featured its product all focus on the fact that Plaintiff's products assist women with cancer, and focus primarily on Plaintiff's clothing. (Otto Dccl. Ex. B.)
In addition, Plaintiff's body lotion is intended to soothe burns and its shampoo product is formulated for women undergoing chemotherapy.
Considering the totality of the circumstances, Plaintiff has not demonstrated that a significant danger exists that an appreciable number of consumers will be confused. While Defendant is active in raising money for breast cancer research and in raising awareness about breast cancer, its products are not made for the medical or aesthetic purpose of assisting women who are coping with breast cancer. Thus, women who are in search of products to assist them during their recovery are unlikely to be deterred from purchasing Plaintiff's products, not least because Defendant does not offer products for the same purposes. Moreover, in light of the differences in the parties' products and their differing channels of sale, it is difficult to see how Plaintiff's reputation or good will is endangered by Defendant's launch. For example, Plaintiff does not allege that Defendant's beauty products or reputation are sub-par.
Plaintiff has also failed to show that the balance of hardships tips in its favor. Defendant has expended a substantial amount of money in developing its becoming product line, and it stands to lose a significant amount if the launch is delayed. (Acton Aff. ¶ 11.) This harm is far greater than any that Plaintiff will suffer from hypothetical scattered episodes of confusion. See Genessee, 124 F.3d at 142 n. 3 (noting that forcing the defendant to recall its product line and cease marketing would cause serious harm that did not outweigh the potential harm to the plaintiff's sales); Revlon, Inc. v. Jerell, Inc., 713 F. Supp. 93, 96, 100 (S.D.N.Y. 1989).
III. CONCLUSION
At this stage, Plaintiff has made an insufficient showing that the extraordinary remedy of injunctive relief is warranted. Therefore, plaintiff's application for a preliminary injunction is denied. Defendant's motion to dismiss to complaint is also denied.
SO ORDERED.