Opinion
19-CV-00581 (GHW)(SN)
07-15-2022
ENCHANTE ACCESSORIES, INC., Plaintiff, v. TURKO TEXTILES, LLC, Defendant.
HONORABLE GREGORY H. WOODS JUDGE
REPORT AND RECOMMENDATION
SARAH NETBURN, UNITED STATES MAGISTRATE JUDGE.
Enchante Accessories, Inc. (“Plaintiff”) sues Turko Textiles Inc. (“Turko” or “Defendant”) for trademark infringement against under the Lanham Act, 15 U.S.C. § 1125(a)(2)(A), and New York common law. Plaintiff also brings claims for unfair competition under New York common law, use of name with intent to deceive under New York General Business Law § 133, injury to business reputation under New York General Business Law § 3601, and unjust enrichment. Plaintiff's unjust enrichment claim was withdrawn early in the litigation. Plaintiff moved for summary judgment on its Lanham Act Claim, and Defendant cross-moved for summary judgment on all claims.
I recommend that Plaintiff's motion for summary judgment be DENIED, and Defendant's cross-motion for summary judgment on Plaintiff's federal and state trademark claims be DENIED. I further recommend that Defendant's motion for summary judgment on Plaintiff's unfair competition, use of name with intent to deceive, and injury to business reputation claims be GRANTED.
BACKGROUND
I. Factual Background
Plaintiff was founded in October 1986 as Enchante Slippers. ECF No. Pl. 56.1 ¶ 8.Although initially the company primarily marketed slippers, its business eventually expanded to include manufacturing various home accessories. Id. at ¶¶ 8-9. Plaintiff changed its name to Enchante Accessories, Inc. on May 13, 1997, and has been doing business under the trade name “Enchante Accessories” since that date. Id. at ¶ 10. Plaintiff primarily sells its products to retailers, and only sells a small percentage of its products directly to consumers. Id. at ¶¶ 17, 21. In 2017, plaintiff formed a limited liability company called “Enchante Direct LLC” to sell its products on Amazon.com. Id. at ¶ 19.
Citations to “Pl. 56.1” refer to ECF No. 121, which collates plaintiff's initial Rule 56.1 Statement in support of its motion for summary judgment and defendant's responses to each statement. Citations to “Def. 56.1” refer to ECF No. 128, which collates defendant's counterstatement of facts and plaintiff's responses to each statement. Plaintiff's reply to defendant's counterstatement, ECF No. 127, was struck by the Court., ECF No. 137.
Most of plaintiff's products are sold under brand names that are either owned or licensed, including “Sheffield Home,” “Raymond Waites,” “Ellen Tracy,” and “Nicole Miller.” Id. at ¶ 23. Plaintiff's line of jewelry and hair accessories, however, are branded as “Enchante Accessories,” “Enchante Accessories Kids,” or “Enchante Girls.” Id. at 24. Many of the products sold under other brand names are labeled with a tag that identifies Enchante Accessories, Inc. as the manufacturer and distributor. Id. at ¶ 25.
The parties dispute the exact products that Plaintiff has produced over the past decade, and the extent to which those products are related to Defendant's products. Id. at ¶ 46. It is undisputed that in 2019, Plaintiff acquired the Westport Linens company and incorporated their products, including sheets, quilts, comforters, bath rugs, shower curtains, and bath towels, into its offerings. Id. at ¶¶ 87-88. Westport's bath towels are sold under the brands “Cosmopolitan,” “Panama Jack,” “Westport Home,” and “Rachel Roy.” Id. at ¶ 89.
Defendant Turko Textiles was founded on April 18, 2014, by Ismail Akdeniz. Id. at ¶ 94. Defendant primarily markets its products under the brand “Enchante Home,” although some products are sold under private labels. Id. at ¶ 97; Def. 56.1 ¶ 366. These products include cotton bath towels, hand towels, beach towels, washcloths, bathrobes, shower curtains, bed linens, throws, and bathmats. Def. 56.1 ¶ 229. Defendant also previously sold throw pillows. Id. at ¶ 294.
On January 11, 2017, Defendant filed federal trademark application no. 87/296254 to register the stylized mark Enchante Home. Pl. 56.1 ¶ 219. On February 6, 2018, the U.S. Patent and Trademark Office published Defendant's application for opposition. Id. at ¶ 220. Plaintiff sent a cease-and-desist letter to Defendant in May 2018, requesting that it withdraw its trademark application and cease all further use of the name “Enchante Home.” Id. at ¶ 221. Defendant denied that its goods were identical to Plaintiff's and continued to market its products under the mark Enchante Home. Id. at ¶¶ 222, 225. On June 6, 2018, Plaintiff filed an opposition proceeding against Defendant's application with the Trademark Trial and Appeal Board. Id. at ¶ 225.
On December 5, 2018, Defendant filed a second trademark application for the Enchante Home brand name. Id. at ¶ 226. On June 4, 2019, the second application was published for opposition, and Plaintiff subsequently initiated a second opposition proceeding against the application. Id. at ¶¶ 228-29. Both proceedings have been stayed pending the outcome of litigation. Id. at ¶ 230.
II. Procedural Background
On January 21, 2019, the Plaintiff filed this action. Following a pre-motion conference, Plaintiff withdrew its unjust enrichment claim, and the case proceeded to discovery. ECF No. 21. After extensive discovery litigation, Plaintiff moved for partial summary judgment on its federal trademark infringement claim. ECF No. 91. Defendant cross-moved for summary judgment on all claims. ECF No. 106. Judge Woods referred the motion to me for a report and recommendation. ECF No. 79.
DISCUSSION
I. Legal Standard
Under Federal Rule of Civil Procedure 56, the Court “shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A dispute is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The moving party bears the initial burden of establishing that no genuine issue of material fact exists. Id. at 256-57; see Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). “In moving for summary judgment against a party who will bear the ultimate burden of proof at trial, the movant's burden will be satisfied if he can point to an absence of evidence to support an essential element of the nonmoving party's claim.” Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d Cir. 1995) (citing Celotex, 477 U.S. at 322-23).
To defeat summary judgment, the non-moving party must produce more than a “scintilla of evidence,” Anderson, 477 U.S. at 252, and “may not rely simply on conclusory statements or on contentions that the affidavits supporting the motion are not credible . . . .” Ying Jing Gan v. City of New York, 996 F.2d 522, 532 (2d Cir. 1993); Flores v. United States, 885 F.3d 119, 122 (2d Cir. 2018) (“[C]onclusory statements, conjecture, or speculation by the party resisting the motion will not defeat summary judgment.” (quoting Kulak v. City of New York, 88 F.3d 63, 71 (2d Cir. 1996))). The non-moving party “must set forth specific facts demonstrating that there is a genuine issue for trial.” Wright v. Goord, 554 F.3d 255, 266 (2d Cir. 2009) (internal quotation marks omitted).
In ruling on a motion for summary judgment, the Court must “resolve all ambiguities and draw all permissible factual inferences in favor of the party against whom summary judgment is sought.” Sec. Ins. Co. of Hartford v. Old Dominion Freight Line, Inc., 391 F.3d 77, 83 (2d Cir. 2004). When both sides have moved for summary judgment, the district court is “required to assess each motion on its own merits and to view the evidence in the light most favorable to the party opposing the motion, drawing all reasonable inferences in favor of that party.” Wachovia Bank, Nat'l Ass'n v. VCG Special Opportunities Master Fund, Ltd., 661 F.3d 164, 171 (2d Cir. 2011).
II. Lanham Act Claim
A. Legal Standard
Section 43(a) of the Lanham Act prohibits “any person” from using “any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods.” 15 U.S.C. § 1125(a)(1). “The section protects unregistered trademarks from infringement.” EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 61 (2d Cir. 2000).
Trademark infringement claims are analyzed under a two-prong test: (1) whether the plaintiff's mark merits protection, and (2) whether the use of a similar mark is likely to cause confusion. Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993).
B. The Protectability of Plaintiff's Mark
“To be valid and protectible, a mark must be capable of distinguishing the products it marks from those of others.” Lane Capital Mgmt., Inc. v. Lane Capital Mgmt. Inc., 192 F.3d 337, 344 (2d Cir. 1999). “An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992) (emphasis in original). “[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source.'” Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205, 210 (2000). To determine distinctiveness, courts classify marks in ascending order as either (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). While generic marks are not protected, descriptive marks “may acquire the distinctiveness which will allow them to be protected under the Act . . . if it ‘has become distinctive of the applicant's goods in commerce.'” Two Pesos, 505 U.S. at 769 (quoting 15 U.S.C. §§ 1052(e), (f)); see also Gruner + Jahr, 991 F.2d at 1075-76. “This acquired distinctiveness is generally called ‘secondary meaning.'” Two Pesos, 505 U.S. at 769; see also Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 390 (2d Cir. 1995) (“Secondary meaning attaches when ‘the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the term in favor of its meaning as a word identifying that business.'”) (quoting Pirone v. MacMillan, Inc., 894 F.2d 579, 583 (2d Cir. 1990)).
Suggestive, arbitrary, or fanciful marks are held to be inherently distinctive regardless of whether they have acquired secondary meaning. Wal-Mart Stores, 529 U.S. at 210; Two Pesos, 505 U.S. at 776. “Suggestive marks are those that are not directly descriptive, but do suggest a quality or qualities of the product . . . through the use of ‘imagination, thought, and perception.'” Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 385 (2d Cir. 2005). In contrast, arbitrary or fanciful marks do not communicate anything about the product. “An arbitrary mark applies a common word in an unfamiliar way,” while “[a] fanciful mark is not a real word at all, but is invented for its use as a mark.” Lane Capital Mgmt., 192 F.3d at 344; see also Wal-Mart Stores, 529 U.S. at 210 (describing “Camel” cigarettes as arbitrary and “Kodak” film as fanciful). “The classification of a mark is a factual question . . . [and] the fact-finder's function is to determine, based on the evidence before it, what the perception of the purchasing public is.” Id.
“Enchante” is a French phrase that means “nice to meet you.” Pl. 56.1 at ¶¶ 45, 148. Because it does not describe - either directly or indirectly - any qualities of Plaintiff's line of home goods and other accessories, its use in this context is arbitrary. See Virgin Enter. Ltd. v. Nawab, 335 F.3d 141, (2d Cir. 2003) (holding that “Virgin” is arbitrary and distinctive as music and electronic equipment store name); SLY Mag., LLC v. Weider Publ'n LLC, 529 F.Supp.2d 425, 437 (S.D.N.Y. 2007) (“The word ‘SLY' is not a generic term and does not suggest or describe plaintiff's fashion/lifestyle magazine in any way.”); Big Star Ent., Inc. v. Next Big Star, Inc., 105 F.Supp.2d 185, 195 (S.D.N.Y. 2000) (explaining that “the proper designation of a mark will vary with the relationship between the term and the product or service” and hence “the word ‘apple' would be arbitrary when used on personal computers, suggestive when used in ‘Apple-A-Day' on vitamin tablets, descriptive when used in ‘Tomapple' for combination tomatoapple juice and generic when used on apples”) (internal quotation marks omitted.) As a result, Plaintiff's mark is inherently distinctive, and it is not required to make a showing of secondary meaning. Lexington Mgmt. Corp. v. Lexington Capital Partners, 10 F.Supp.2d 271, 280 (S.D.N.Y. 1998).
Defendants argue that “Enchante” is not entitled to protection because it is a trade name, not a trademark. A trade name is “used to identify businesses as opposed to the goods or services those businesses sell.” Morgans Grp. LLC v. John Doe Co., No. 10-cv-5225 (KMW)(HBP), 2012 WL 1098276, at *4 n.7 (S.D.N.Y. Mar. 31, 2012). While trade names cannot be federally registered, they are protected by § 43(a) of the Lanham Act, and the same likelihood of confusion test applies. Id.; see also Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 579 (2d Cir. 1991).
Accordingly, whether “Enchante” is characterized as a trade name or a trademark, Plaintiff has established that it is inherently distinctive and therefore merits protection. Throughout this report, I refer to “Enchante Accessories” both as a trade name and as a mark.
C. Likelihood of Confusion
If the plaintiff establishes that its mark is entitled to protection, the inquiry turns to whether defendant's use creates a likelihood of confusion, “or, in other words, that numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant's mark.” Gruner + Jahr, 991 F.2d at 1077. To make this determination, courts in the Second Circuit apply the factors identified by Judge Friendly in Polaroid Corp. v. Polarad Elec. Corp.: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) the likelihood that the prior owner will “bridge the gap,” (5) actual confusion between products, (6) defendant's good faith in adopting its mark, (7) the quality of defendant's product, and (8) the sophistication of the buyers. 287 F.2d 492, 495 (2d Cir. 1961); see also Gruner + Jahr, 991 F.2d at 1077. “No one of the Polaroid factors is dispositive, and the list is not exhaustive; ‘the analysis of the factors is not a mechanical process.'” Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997).
1. Strength of the Mark
This factor “focuses on ‘the distinctiveness of the mark, or more precisely, its tendency to identify the goods' as coming from a particular source.” Lang, 949 F.2d at 581 (quoting McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir. 1979)). “To gauge a mark's strength, we consider two factors: its inherent distinctiveness, and its distinctiveness in the marketplace.” Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). “‘The former . . . examines a mark's theoretical potential to identify plaintiff's goods or services without regard to whether it has actually done so,' and the latter examines the ‘recognition plaintiff's mark has earned in the marketplace as a designator of plaintiff's goods or services.'” Easy Spirit, LLC v. Skechers U.S.A., Inc., 515 F.Supp.3d 47, 71 (S.D.N.Y. 2021) (quoting Brennan's, Inc. v. Brennan's Rest., LLC, 360 F.3d 125, 130 (2d Cir. 2004)). The inherent distinctiveness of the mark considers the same factors for determining protectability, that is, whether the mark is generic, descriptive, suggestive, arbitrary or fanciful. See Playtex Prod., Inc v. Georgia-Pac. Corp., 390 F.3d 158, 163 (2d Cir. 2004), superseded on other grounds as recognized in Starbucks Corp v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 107-08 (2d Cir. 2009); see also Time, Inc. v. Peterson Publ'g Co. LLC, 173 F.3d 113, 118 (2d Cir. 1999).
Even arbitrary marks, however, can be “commercially weak if the mark lacks significance in the market place for identifying the origin of the goods.” Oxford Indus. Inc. v. JBJ Fabrics, Inc., No. 84-cv-2505 (BN), 1988 WL 9959, at *4 (S.D.N.Y. Feb. 2, 1988); see also Dana Braun, Inc. v. SML Sport Ltd., No. 03-cv-6405 (BSJ), 2003 WL 22832265, at *9 (S.D.N.Y. Nov. 25, 2003). Courts in this Circuit apply six non-exclusive factors to determine marketplace distinctiveness: “(1) advertising and promotional expenses; (2) consumer studies linking the mark to the source; (3) unsolicited media coverage of the product; (4) sales success; (5) attempts to plagiarize the mark; and (6) length and exclusivity of the mark's use.” Two Hands IP, LLC v. Two Hands Am., Inc., 563 F.Supp.3d 290, 303 (S.D.N.Y. 2021). “While ‘the Second Circuit has stated that district courts should be cautious in weighing these factors at the summary judgment stage, it has nonetheless supported summary judgment in cases where the proponent of the alleged [mark] has failed to raise a material issue of fact on the question of secondary meaning.” Easy Spirit, 515 F.Supp.3d at 61 (quoting Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F.Supp.2d 340, 344 (E.D.N.Y. 2007)). “That is because ‘proof of secondary meaning entails vigorous evidentiary requirements.'” Capri Sun GmbH v. Am. Beverage Corp., No. 19-cv-1422 (PAE)(DCF), 2022 WL 976270, at *35 (S.D.N.Y. Mar. 31, 2022) (quoting Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985)). “A plaintiff bears the burden of proving that his mark acquired secondary meaning by the time the allegedly infringing product came on the market.” LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F.Supp.3d 612, 654 (S.D.N.Y. 2016).
Although Plaintiff has used the trade name “Enchante” since 1986, it has not made a showing that the mark has significant consumer recognition. See H. Lubovsky, Inc. v. Esprit de Corp., 627 F.Supp. 483, 487 (S.D.N.Y. 1986). Plaintiff does not point to any evidence of its advertising and promotional expenses, consumer studies, unsolicited media coverage, sales success, or attempts at plagiarism. Brown v. Quiniou, 744 F.Supp. 463, 470 (S.D.N.Y. 1990) (“[A]lthough failure to undertake a consumer survey concerning recognition of [the mark] is not by itself fatal to plaintiffs' assertion of secondary meaning, where the other evidence of consumer recognition is hardly overwhelming, the absence of survey evidence weighs heavily against plaintiffs' position.”); Capri Sun GmbH, 2022 WL 976270, at *37 (failure to conduct consumer survey or other empirical study weighed against plaintiffs). Instead, Plaintiff asserts that “customers often refer to ‘Enchante Accessories' as the source of the product, even when the product is branded with one of Plaintiff's product brands,” ECF No. 96, Plaintiff's Memorandum of Law in Support of Motion for Partial Summary Judgment (“Pl. Mem.”) 8, citing to screenshots of its products on retailer web sites that identify “Enchante Accessories” as the brand and a display of seasonal cooking utensils at a Century 21 store labeled “Enchante Studio Cuisine,” see, e.g., ECF No. 95, Ex. 123, Ex. 143 at 1-6. This evidence, standing alone, does not indicate that “Enchante” “has become synonymous with plaintiff's products in the mind of the buying public.” Exquisite Form Indus. v. Exquisite Fabrics of London, 378 F.Supp. 403, 411 (S.D.N.Y. 1974). The utensils featured in the display - like may of Plaintiff's products - appear to be marketed under the trademarks “Cook with Color,” “Studio Cuisine,” and “Country Kitchen,” with the name “Enchante” appearing only on the price tag, likely undermining any customer identification of the mark with the product. Id. (concluding that evidence of advertising expenditures did not indicate strong customer identification of the mark with the product where some of plaintiff's products were marketed under other trademarks). Therefore, Plaintiff has not met its burden of proving that its mark is distinctive in the marketplace. See SLY Mag., 529 F.Supp.2d at 438 (“So while plaintiff's mark is arbitrary because of its inherent distinctiveness, the lack of evidence that there is widespread commercial recognition of the plaintiff's mark demonstrates that the ‘SLY' mark is a weak mark.”)
Plaintiff claims that since 2014, its annual sales of products under its trade name have exceeded $140 million per year. Pl. 56.1 ¶ 18. Defendant disputes that Plaintiff's proceeds can be tied to products sold under the tradename “Enchante Accessories.” Id. Regardless, Plaintiff fails to address this factor in its brief. See Pl. Mem. 8.
In support of its motion for summary judgment, Defendant emphasizes that Plaintiff does not have an advertising budget for promoting its trade name and cites to a consumer survey conducted by Defendant's expert Hal Poret that found a net awareness rate of just 0.3% among consumers of the type of products associated with Plaintiff's mark. While Plaintiff's lack of an advertising budget is uncontested, Plaintiff disputes the trustworthiness of the survey, relying on its expert's report to argue that the universe of potential purchasers was improperly defined as consumers rather than wholesalers and the survey design was flawed. See also Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, Inc., 652 F.Supp. 1105, 1110 (S.D.N.Y. 1987) (explaining that the trustworthiness of a survey depends on a demonstration by its proponent that, among other factors, the universe was properly defined, and the data was analyzed in accordance with accepted statistical principles). Plaintiff, however, does not move to exclude the expert's report and survey, instead contending that it should “be given no weight.” Pl. Rep. 18; see also Medisim Ltd. v. Bestmed LLC, 861 F.Supp.2d 158, 167, 180 (S.D.N.Y. 2012) (explaining that surveys can be excluded under Rule 702 and Rule 403 if they are shown to be invalid or unreliable, but “[m]ethodological errors typically go to the evidentiary weight of a survey, rather than its admissibility.”) Such weighing of evidence is inappropriate on a motion for summary judgment. See RVC Floor Decor, Ltd. v. Floor & Decor Outlets of Am., Inc., 527 F.Supp.3d 305, 320 (E.D.N.Y. 2021). But viewing the evidence in the light most favorable to Plaintiff, a reasonable juror could conclude that Defendant's survey is an imperfect measure and discount it in her consideration of the mark's distinctiveness in the market. Akiro LLC v. House of Cheatham, Inc., 946 F.Supp.2d 324, 339 (S.D.N.Y. 2013).
The remaining evidence cited by Defendant does not establish as a matter of law that Plaintiff's trade name lacks distinctiveness in the marketplace. For example, in support of its claim that extensive third-party usage has undermined the strength of the mark, Defendant cites to a search of the Principal Register and the USPTQ Trademark Electronic Search System Database that yielded six registered marks including the word “Enchante.” ECF No. 120, Declaration of Robert R. Axenfeld (“Axenfeld Decl.”) ¶ 50, Ex. 37. But none of these marks is currently in use. Axenfeld Decl. ¶ 51. The two active registrations identified by Defendant are marks associated with preserved flowers and wine. Id. at ¶ 57. Although Defendant claims that these registrations are for “classes of goods that are related to the classes of goods that [Plaintiff] sells,” Plaintiff disputes this claim, countering that “[t]here is no evidence that Plaintiff sells or has sold preserved flowers for decoration, wines, or any products related to those categories.” Def. 56.1 ¶ 154. While “[t]he law in this Circuit is clear that extensive third-party usage can dilute the strength of the mark, . . . the significance of those third-party trademarks depends wholly upon their usage.” Easy Spirit, 515 F.Supp.3d at 72 (internal quotation marks omitted). Because these marks are either not in use or the parties dispute that they are used in connection with analogous products, the evidence of third-party registrations produced by Defendant “is not persuasive evidence that [Plaintiff's] mark is weak.” Bear U.S.A., Inc. v. Kim, 71 F.Supp.2d 237, 255 (S.D.N.Y. 1999); see also Katz v. Modiri, 283 F.Supp.2d 883, 894 (“Juvenex, however, does not provide evidence that the above-listed marks are currently in use or are sold in conjunction with spa services.”); cf. Streetwise Maps, 159 F.3d at 744 (finding that use of the word “street” in the names of other map products, including “StreetFinder,” “Streetmate,” and “Streetscene” weakened the strength of plaintiff's mark).
In conclusion, Plaintiff has failed to meet its burden of establishing that its mark is distinctive in the marketplace, and therefore this factor weighs against a finding of a likelihood of confusion. However, Defendant has failed to demonstrate the absence of a triable issue of material fact, and so this factor also does not weigh in favor of granting summary judgment to Defendant.
2. Similarity of the Marks
“In assessing similarity, courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.” Gruner + Jahr, 991 F.2d at 1078; see also Sports Auth. v. Prime Hosp. Corp., 89 F.3d 955, 962 (2d. Cir. 1996) (“In deciding whether the marks are similar as used we do not look just at the typewritten and aural similarity of the marks, but how they are presented in the marketplace.”). As such, “differences in the parties' use of the marks weighs against a likelihood of confusion,” including the “‘size, layout, design and logotype of the two titles.'” Katz, 283 F.Supp.2d at 895 (quoting Centaur Commc'ns, Ltd.v. A/S/M Communc'ns, Inc., 830 F.2d 1217,1226 (2d Cir. 1987) superseded on other grounds as recognized in Erchonia Corp. v. Bissoon, 410 Fed.Appx. 416 (2d Cir. 2011)).
Plaintiff contends that the use of the arbitrary term “Enchante” in combination with the descriptive term “Home” renders Defendant's mark confusingly similar. Morningside Grp. Ltd. v. Morningside Capital Grp., LLC, 182 F.3d 133, 140 (2d Cir. 1999) (“Only one word stands out as dominant in the two names, and that - the only arbitrary word - is ‘Morningside.'”); see also Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp. 445, 449 (S.D.N.Y. 1982) (same); Am. Exp. Co. v. Am. Exp. Limousine Serv. Ltd., 772 F.Supp. 729, 733 (E.D.N.Y. 1991) (reasoning that “the addition of . . . descriptive words would be more likely to cause consumers to focus on the predominant portion of defendants' name”).
This argument ignores how the marks are presented to consumers. It is undisputed that most of Plaintiff's products, except jewelry and hair products, are sold under various owned and licensed brand names, including “Sheffield Home,” “Raymond Waites,” “Ellen Tracy,” and “Nicole Miller.” Pl. 56.1 ¶ 23; Def. 56.1 ¶ 59. In photos of these product labels, the trade name “Enchante Accessories” typically appears either below the third-party mark or on the back or bottom of the product in significantly smaller font. Def. 56.1 ¶¶ 7-10, 19, 26, 30, 34, 43, 53, 54. The trade name is also typically couched within some variation of the phrase: “Designed exclusively and distributed by: Enchante Accessories, Inc., NY, NY 10016.” Pl. 56.1 ¶ 25; Def. 56.1 ¶¶ 14, 19, 23, 30-31, 43, 47, 53. While Plaintiff quibbles with Defendant's characterization of its trade name's placement and objects to Defendant's claim that the consumers are more likely to notice the third-party branding, it is reasonable to infer that prospective purchasers would associate the products with the third-party mark - not Enchante Accessories. Def. 56.1 ¶¶ 10, 12-13, 23-24, 27, 34-40, 45-46, 50-51, 56-57. Courts in this Circuit have held that the “prominent' use of a brand name significantly reduces the likelihood of confusion between subsidiary marks or trade names. Nabisco, Inc. v. Warner Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000); Swatch Grp. (U.S.) v. Movado Corp., No. 01-cv-0286 (RLC), 2003 WL 1872656, at *4 (S.D.N.Y. Apr. 10, 2003) (reasoning that the dominant use of other marks on the products eliminated the possibility of confusion, even where the marks in question were similar visually and aurally). In contrast, all of Defendant's products that are not private labeled include tags or packaging that feature the Enchante Home logo as the dominant text, sometimes with the phrases “100% Turkish Cotton” and “Made in Turkey” appearing below. Def. 56.1 ¶¶ 239-42. Ultimately, the striking divergence between how the marks are presented on products undercuts the common use of the term “Enchante.” Star Indus., 412 F.3d at 386 (explaining that while the marks in question appeared similar when viewed in isolation, “this similarity is tempered by the fact that the respective packaging is very different.”); Streetwise Maps, 159 F.3d at 744 (reasoning that “[w]hile the two names sound similar, the trademarks themselves are not confusingly similar” given that the maps have different folds, logos, dress colors, and typefaces).
Even where the Enchante Accessories mark is dominant on the packaging, it is unlikely that a reasonable consumer would find the marks confusingly similar. As Plaintiff admits, only its jewelry and hair accessory lines are sold exclusively under its mark. Pl. 56.1 ¶ 24. The labels on these products feature “Enchante” in sans serif font roughly twice as large as “accessories” (or, in one case, the phrase “Girls”) or alternately in child-like, lower case bubble lettering. Id. In contrast, “Enchante” in Defendant's mark is printed in a serif font, with the phrase “Home” in brown script of roughly equivalent size. Def. 56.1 ¶ 236. The two words are linked by the common “H,” which appears in the center of the mark with dramatic flourishes. Id. The use of different fonts and the emphasis on the word “Home” in Defendant's logo reduces the likelihood of confusion between the two marks. SLY Mag., 529 F.Supp.2d at 439 (“When viewed in context, the plaintiff's use of italicized script and the frequent addition of a tagline . . . tend to differentiate the marks); H. Lubovsky, 627 F.Supp. at 488 (reasoning the marks in question were not similar where, despite the use of a common word, plaintiff's logo used a “stylized, semiscript that seeks to suggest the calligraphy of traditional high-fashion design” while defendant's logo used “modern broken stencil block print”).
I conclude that the marks are not confusingly similar, and this factor weighs strongly in favor of Defendant.
3. Proximity of the Products
“Under this Polaroid factor, we consider whether the two products compete with each other.” Sports Auth., 89 F.3d at 963 (internal quotation marks omitted). But “direct competition between the products is not a prerequisite to relief.” Arrow Fastener Co., 59 F.3d at 396 (internal quotation marks omitted). “In assessing this factor, the court considers not only the nature of the services themselves, but also the structure of the relevant market in which they are sold, which includes the manner in which the services are displayed and advertised, the channels of trade through which they are promoted, and the class of customers for whom they are designed and to whom they are sold.” Windsor, Inc. v. Intravco Travel Ctr., 799 F.Supp. 1513, 1523 (S.D.N.Y. 1992); see also Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp.2d 305, 316 (S.D.N.Y. 2000) (“[T]he courts compare all aspects of the products, including price, style, intended use, target clientele, typical distribution channels, and others.”).
The strongest fact favoring Plaintiff is that it currently sells or has previously sold its products to some of the same stores as Defendant. Compare Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1175 (2d Cir. 1976)) (reasoning that consumers would likely be confused where defendant sold its products in the same stores where plaintiff's lines are sold); with Paco Sport, Ltd., 86 F.Supp.2d at 317 (S.D.N.Y. 2000) (concluding that there was significant competitive distance where plaintiff sold its products in “inexpensive retail outlets in urban neighborhoods” and defendant “sold its products through exclusive, upscale department and specialty stores”). It is undisputed that both parties have sold their products to Century 21, Macy's, Bealls Outlet, Bed Bath & Beyond, Walmart, Wayfair, HSN, Rue La La, Zulily, and Overstock.com. Pl. 56.1 ¶ 143. While Plaintiff and Defendant sold their products to the retail company Tuesday Morning at different times, they both have sold towels to the company within the last decade. Id. at ¶ 144. Furthermore, both companies sell some products directly to customers via Amazon.com, although Plaintiff admits it does not sell bath towels online. Id. at ¶¶ 19, 124; Def. 56.1 ¶¶ 207-08.
The similarity between the product lines also favors Plaintiff. Plaintiff has entered the bath towel market only recently with the acquisition of Westport Linens in 2019, but has sold related products in the past, including bathrobe sets, bath products, and kitchen towels. Pl. 56.1 ¶ 12; Def. 56.1 ¶¶ 210, 215, 222. See Virgin Enter., Ltd., 335 F.3d at 151 (reasoning that there was a “high degree of proximity” between plaintiff's “prior sale of consumer electronic audio equipment and defendants' subsequent sales of telephones and telephone services”).
Notwithstanding these areas of overlap, viewing the evidence in the light most favorable to Defendant, there is still a triable issue of material fact as to whether the parties' products are in competitive proximity. First, Plaintiff's towels and other home goods are all sold under other marks, significantly reducing any likelihood of consumer confusion. See Def. 56.1 ¶¶ 6-7, 222. Furthermore, Plaintiff primarily sells to retailers - not directly to consumers. Pl. 56.1 ¶¶ 17; Def. 56.1 ¶ 2, 107. Retail buyers purchase the goods either by visiting the parties' showrooms or by placing an order directly with sales representatives. Pl. 56.1 ¶¶ 14, 102; Def. 56.1 ¶¶ 68, 295-96, 323, 331, 380. Retailers are sophisticated customers, and so are less likely to be confused as to the source of the products. Merriam-Webster, Inc v. Random House, Inc., 35 F.3d 65, 72 (2d Cir. 1994); Horn's, Inc. v. Sanofi Beaute, Inc., 963 F.Supp. 318, 324 (S.D.N.Y. 1997). Lastly, Plaintiff does not sell Turkish cotton towels, robes, bathrobes, or sleep pillows, Def. 56.1 ¶ 223, and Defendant has produced some evidence that there are differences in quality and price between the parties' products that indicate that they are targeted to different consumers, see, e.g., id. at ¶¶ 30-32, 259 (Defendant's bathrobes retail between $64.99 and $69.99, while Plaintiff's set including plush bathrobe priced by retailer at $29.99). See also Plus Prod. v. Plus Discount Foods, Inc., 722 F.2d 999, 1008 (2d Cir. 1983) (fact that food products were marketed to separate groups of customers weighed against a finding that there was a likelihood of confusion).
Ultimately, I conclude that neither party has shown an absence of a triable issue of material fact on the proximity of the products. So this factor weighs against granting either party summary judgment.
4. Bridging the Gap
“‘Bridging the gap' refers to the likelihood that the senior user will enter the junior user's market in the future, or that consumers will perceive the senior user as likely to do so.” Star Indus., 412 F.3d at 387. “[I]f the owner of a trademark can show that it intends to enter the market of the alleged infringer, that showing helps to establish a future likelihood of confusion as to source.” Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 874 (2d Cir. 1986). This factor reflects that “trademark laws are designed in part to protect ‘the senior user's ‘interest in being able to enter a related field at some future time.'” Id. (quoting Scarves By Vera, 544 F.2d at 1172).
Plaintiff entered the bath towel market in 2019 with the acquisition of Westport Linens and has previously produced other related home goods products, such as bathroom accessories. While Defendant argues that its market should be defined narrowly as Turkish cotton towels and Plaintiff has no plans to produce such towels, senior users have an interest in “preserving reasonable avenues of future expansion into related fields,” particularly where products are closely related. Centaur Commc'ns, Ltd., 652 F.Supp. at 1113; Scarves by Vera, 544 F.2d at 1174 (reasoning that fashion and fragrance industries similar enough that there was a likelihood that consumers would assume defendant's products manufactured by plaintiff). Plaintiff has, however, previously marketed its home goods under other marks and has not demonstrated an intention to market towels under its “Enchante Accessories” mark in the future. King Research, Inc. v. Shulton, Inc., 454 F.2d 66, 68 (2d Cir. 1972) (unlikely that plaintiff would bridge the gap and sell hair spray under SHIP-SHAPE mark “in view of the fact that its own sales of toiletry articles to date have been under other names”). As such, given the differences between Plaintiff's and Defendant's mark, any possibility of a future likelihood of confusion is significantly diminished and this factor only weakly favors Plaintiff. McGregor-Doniger Inc., 599 F.2d at 1136.
5. Actual Confusion
“It is black letter law that actual confusion need not be shown to prevail under the Lanham Act, since actual confusion is very difficult to prove and the Act requires only a likelihood of confusion as to source.” Savin Corp. v. Savin Grp., 391 F.3d 439, 459 (2d Cir. 2004) (cleaned up). Still, “[t]here can be no more positive or substantial proof of the likelihood of confusion than proof of actual confusion.” Id. (internal quotation marks omitted).
“Evidence of actual confusion may consist of anecdotal or survey evidence.” Paco Sport, Ltd., 86 F.Supp.2d at 319. Anecdotal evidence “must be of a type that ‘could inflict commercial injury [on the plaintiff] in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation.'” LVL XIII Brands., 209 F.Supp.3d at 672 (quoting Lang, 949 F.2d at 583); see also Tr. of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F.Supp. 733, 746-47 (S.D.N.Y. 1997) (“[T]here is a difference between isolated expressions of momentary confusion and confusion that leads to actual purchasing decisions.”). “In addition, although statistical evidence is not strictly required, ‘the absence of surveys is evidence that actual confusion cannot be shown.'” Disney Enter., Inc. v. Sarelli, 322 F.Supp.3d 413, 435-36 (S.D.N.Y. 2018) (quoting Sports Auth., 89 F.3d at 964).
“A plaintiff must demonstrate a probability of confusion, not a mere possibility, affecting numerous ordinary prudent purchasers. De minimis evidence of actual confusion does not establish the existence of a genuine issue of material fact regarding the likelihood of confusion.” O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F.Supp.2d 500, 523 (S.D.N.Y. 2008) (cleaned up).
In support of its motion for summary judgment, Plaintiff cites to seven instances of alleged confusion. First, after Defendant began selling towels to Saks Fifth Avenue, between February 2017 and December 2018, Plaintiff received one electronic purchase order and 22 checks intended for defendant. Pl. 56.1 ¶¶ 159-62, 166, 168. Second, in the summer of 2017, a Plaintiff's sales manager and Defendant's co-owner separately contacted Saks buyer Alex Faille to schedule sales meetings. Id. at ¶¶ 186-87. Faille asked Defendant's co-owner if he was associated with Plaintiff's sales manager, noting that he “was a little confused.” Id. at ¶¶ 187-89. He also asked the sales manager if he was affiliated with Defendant. Id. at ¶ 190. A year later, another sales representative for Plaintiff attempted to contact Faille. Id. at ¶ 192. When the representative asked Faille if Plaintiff's prior vendor number was still live, Faille responded: “We do have that vendor number but it comes up as Turko Textiles . . . is that you?” Id. at 19394. Fourth, in March 2019, a buyer for Nordstrom Rack sent photos of Defendant's towels to Plaintiff, asking “Do you guys do Textiles too?” Id. at ¶ 197. Plaintiff responded, “it is not us” and the buyer made no further inquiries. Id. Fifth, in October 2019. Century 21's website mistakenly identified a picture frame manufactured by Plaintiff as an “Enchante Home” product. Id. at ¶ 198. Sixth, in December 2019, UPS returned an order of Defendant's towels that failed to reach the intended customer to Plaintiff. Id. at ¶¶ 199-211. Seventh, in June 2021, an event coordinator from Rue La La sent a purchase order to Plaintiff for Bomonti towel sets, an Enchante Home product. Id. at ¶¶ 213-16. When Plaintiff responded that it did not recognize the product codes, the buyer wrote that the purchase order had been sent in error. Id. at ¶¶ 217-18.
The anecdotal evidence produced by Plaintiff fails to demonstrate that it has suffered any commercial injury or that there is likely probability of confusion affecting numerous ordinary prudent purchasers. The large number of checks that were mistakenly mailed to Plaintiff is the direct result of its failure to notify Saks of the error for over a year. Def. 56.1 ¶¶ 345-54. Indeed, Plaintiff cashed 18 checks intended for Defendant. Id. The fact that two of Defendant's prospective purchasers misdirected purchase orders and one mistakenly mailed checks to Plaintiff does not indicate that any confusion was likely to result in a diversion of Plaintiff's sales. Lang, 949 F.2d at 583 (“no evidence links the confusion . . . to any potential or actual effect on consumer's purchasing decisions”); Merriam-Webster, 35 F.3d at 72 (“no testimony by any consumer, retail or wholesale, who intended to buy a Merriam-Webster dictionary but mistakenly bought a Random House dictionary because of confusion”); SLY Mag., 529 F.Supp.2d at 440-41 (same). Especially given the overlap between the parties' retail customers, the fact that Plaintiff can point to only two examples of retailers sending purchase orders and checks to the wrong party does not indicate that there is widespread confusion among purchasers. Cf. Lambda Elecs. Corp. v. Lambda Tech, Inc., 515 F.Supp. 915, 923, 927 (S.D.N.Y. 1981) (fact that five of defendant's customers mistakenly sent checks to plaintiff over a two-year period not evidence of “rampant” confusion); Henegan Cons. Co. v. Heneghan Contracting Corp., No. 00-cv-9077 (JGK), 2002 WL 1300252, at * (S.D.N.Y. June 12, 2022) (evidence that plaintiff had “received a number of misdirected billings, dispatch confirmation sheets, telephone calls and/or visits or communications from vendors, subcontractors, trade unions, and other members of the construction industry” was not “overwhelming”).
The parties fiercely contest the admissibility of statements made by Faille in his deposition and in a subsequent declaration and the email from the Nordstrom Rack buyer. Regardless, the Court of Appeals has held that “[i]nquiries about the relationship between an owner of a mark and an alleged infringer do not amount to actual confusion,” and as such neither inquiry raises a triable issue of material fact. Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 124 (2d Cir. 2001). While Plaintiff argues that the Nordstrom Rack buyer's email is not an inquiry as to the relationship between the two companies but rather relates to the source of Plaintiff's goods, one such inquiry, standing alone, is de minimis evidence of actual confusion. LVL XIII Brands, 209 F.Supp.3d at 673 (one text message and two Instagram posts reflecting actual confusion as to source is de minimis). Furthermore, the buyer does not appear to have made a purchasing decision based on her confusion. Id.
Similarly, Plaintiff has not shown that Century 21's identification of an Enchante Accessories frame as an Enchante Home product or UPS's mistaken return of Defendant's towels to plaintiff led to a diversion of sales or other commercial injury, and one misdirected delivery does not constitute actual confusion. Penta Hotels Ltd. v. Penta Tours, No. B-86-089 (JAC), 1988 WL 384940, at *34 (D. Conn. Sept. 30, 1988).
Lastly, Plaintiff's failure to produce survey evidence of confusion among consumers weighs against a finding of actual confusion. Merriam-Webster, 35 F.3d at 72; see also Disney Enter., 322 F.Supp.3d at 436. Accordingly, this factor favors Defendant, or “is at best neutral.” RVC Floor Decor, 527 F.Supp.3d at 326 (concluding that factor weighed in favor of defendant where anecdotal evidence did not indicate that plaintiff had suffered any commercial injury and no survey evidence was presented).
6. Good Faith
This factor concerns “whether the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between his and the senior user's product.” Edison Bros. Stores v. Cosmair, Inc., 651 F.Supp. 1547, 1560 (S.D.N.Y. 1987). “If there is no evidence suggesting the presence of these motives, courts often find that the defendant acted in good faith.” Id.; see also Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F.Supp.2d 355, 377 (S.D.N.Y. 2003) (factor weighs in defendants' favor where no evidence of bad faith). Defendant's “selection of a mark . . . that reflects the product's characteristics, request for a trademark search and reliance on the advice of counsel are factors that support a finding of good faith.” SLY Mag., 529 F.Supp.2d at 441.
There is no evidence that Defendant chose the name Enchante Home to capitalize on the reputation and good will of Plaintiff's mark. Defendant's founder, Ismail Akdeniz, testified in his deposition that the name was inspired by his love for France and association of Paris with the textile business. Def. 56.1 ¶ 381. While Akdeniz did not consult with counsel, he and his accountant searched the U.S. Patent and Trademark Office Records for “Enchante” and “Enchante Home” before selecting the name in 2014. Id. at ¶ 383. They also searched Google and social media web sites including Facebook, Instagram, and Twitter. Id. Akdeniz did not find any reference to Enchante Accessories in his search. Id. at ¶ 384.
While Plaintiff argues that Defendant's continued use of the name “Enchante Home” and decision to proceed with a trademark application despite knowledge of the Enchante Accessories trade name indicates a lack of good faith, Plaintiff did not send a cease-and-desist letter until May 16, 2018, four years after Defendant began using the mark. Pl. 56.1 ¶ 221. Notably, in its response, Defendant asserted “the goods offered by [Turko] under its Enchante Home mark are different than any goods sold by Enchante Accessory Inc.” Id. at ¶ 222. Courts have consistently held that actual and constructive notice of a senior user's mark “is not necessarily evidence of bad faith,” even where the junior user had knowledge of the senior user's mark before or shortly after it made the decision to use the mark. Edison Bros. Stores, 651 F.Supp. at 1560; see also Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 48 (2d Cir. 1978) (no bad faith despite actual and constructive notice of registered trademark where treasurer testified that he considered his firm's products to be unrelated); SLY Mag., 529 F.Supp.2d at 441 (no bad faith where defendant received a cease-and-desist letter from plaintiff one month before its first magazine went on sale); Lang, 949 F.2d at 579 (no bad faith despite prior knowledge of trade name “because adoption of a trademark with actual knowledge of another's prior registration of a very similar mark may be consistent with good faith”)
Accordingly, this factor weighs in favor of Defendant.
7. Quality of Defendant's Product
“Generally, quality is weighed as a factor when there is an allegation that a low quality product is taking unfair advantage of the public good will earned by a well-established high quality product.” Gruner + Jahr, 991 F.2d at 1079. Plaintiff admits that there is no evidence that Defendant's products are of inferior quality. As such, this factor is neutral. Id; see also Essence Commc'ns, Inc. v. Singh Indus., Inc., 703 F.Supp. 261, 270 (S.D.N.Y. 1988) (“Because defendants' products are of high quality, this factor diminishes in importance.”).
8. Sophistication of the Buyers
The parties agree that Plaintiff's customer base are primarily retailers. “Retailers are assumed to be more sophisticated buyers and thus less prone to confusion.” W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 576 (2d Cir. 1993). Plaintiff argues that the risk of initial interest confusion is particularly high with buyers who have previously purchased its products, a risk it contends is borne out by the alleged evidence of actual confusion among buyers. But in the cases cited by Plaintiff, courts found that there was a high degree of similarity between the marks and there was evidence of actual confusion, neither of which is true here. Compare Centaur Commc'n, 830 F.2d at 1228 (reasoning that the sophistication of buyers “decreased the likelihood of confusion since neither the products nor the marks are identical”), with Morningside Grp., 182 F.3d at 143 (“[W]hen, as here, there is a high degree of similarity between the parties' services and marks, ‘the sophistication of the buyers cannot be relied on to prevent confusion.'”). Plaintiff also did not produce any evidence that buyers were likely to be “misled into an initial interest in defendant” because of Plaintiff's reputation in the industry. Cf, Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 260 (2d Cir. 1987) (evidence that defendant solicited business through phone calls and buyers generally relied on trust instead of independent investigations when dealing with a new company sufficient to find that factor weighed in plaintiff's favor). The final Polaroid factor therefore favors Defendant.
9. Weighing the Polaroid factors
No single Polaroid factor is dispositive, and “the evaluation of the Polaroid factors is not a mechanical process ‘where the party with the greatest number of factors weighing in its favor wins.'” Paddington Corp. v. Attiki Imp. & Distrib., 996 F.2d 577, 584 (2d Cir. 1993) (quoting Physicians Formula Cosmetics v. West Cabot Cosmetics, Inc., 857 F.2d 80, 82 (2d Cir. 1988)).
“Rather, a court should focus on the ultimate question of whether consumers are likely to be confused.” Id. Courts have, however, declined to grant summary judgment where the plaintiff failed to meet its burden of proof on strength, similarity, and proximity, “perhaps the most significant in determining the likelihood of confusion.” Mobil Oil Corp., 818 F.2d at 258; see also Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F.Supp.3d 675, 701 (S.D.N.Y. 2014).
Plaintiff has not met its burden of showing the absence of a triable issue of material fact on the first and third factors, and, viewing the evidence in the light most favorable to Defendant, the second factor strongly favors Defendant. The fourth factor only weakly favors Plaintiff, and the fifth, sixth, and eighth factors weigh in favor of Defendant. The seventh factor - the quality of Defendant's products - is neutral. Therefore, Plaintiff has not shown a likelihood of confusion as a matter of law, and I recommend that the Court deny its motion for summary judgment.
Although five of the eight factors either favor Defendant or are neutral, viewing the evidence in the light most favorable to Plaintiff, there are triable issues of material fact regarding the strength of Plaintiff's mark and the competitive proximity of the parties' products. I therefore recommend that the Court also deny Defendant's motion for summary judgment.
III. State Law Claims
A. Trademark Infringement and Unfair Competition Under the Common Law of New York and N.Y. Gen. Bus. Law § 360-o
“To prevail on a claim of common law trademark infringement, plaintiff must establish that its mark is valid and legally protectible and that another's use of a similar mark is likely to create confusion as to the origin of the product.” Horn's, 963 F.Supp. at 328 (internal quotation marks omitted); see also N.Y. Gen. Bus. Law § 360-o (“Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.”) As with a Lanham Act claim, “it is necessary to show that the defendant's use of the trade-mark is likely to cause confusion, mistake or to deceive,” although “actual confusion need not be shown.” Allied Maint. Corp. v. Allied Mech. Trades, Inc., 42 N.Y.2d 538, 543 (1977); see also Lorillard Tobacco Co. v. Jamelis Grocery, Inc., 378 F.Supp.2d 448, 456 (S.D.N.Y. 2005) (“It is well-established that the elements necessary to prevail on causes of action for trademark infringement and unfair competition under New York common law ‘mirror the Lanham Act claims.'”) (quoting Malletier v. Dooney & Bourke, Inc., 340 F.Supp.2d 415, 436-37 (S.D.N.Y. 2004)). Because there are triable issues of material fact as to whether there is a likelihood of confusion between the two marks, I recommend that Defendant's motion for summary judgment on this claim be denied.
To prevail on an unfair competition claim under New York common law, the plaintiff “must couple its evidence supporting liability under the Lanham Act with additional evidence demonstrating [the defendant's] bad faith.” Info. Superhighway, Inc. v. Talk Am., 395 F.Supp.2d 44, 56 (S.D.N.Y. 2005) (quoting Philip Morris USA Inc. v. Felizardo, No. 03-cv-5891 (HB), 2004 WL 1375277, at *6 (S.D.N.Y. June 18, 2004)). “It must prove: (1) actual confusion or a likelihood of confusion; and (2) the defendant's bad faith.” LVL XIII Brands, 209 F.Supp.3d at 678. Because Plaintiff has not identified any evidence of bad faith on Defendant's part, I recommend that Defendant's motion for summary judgment on this claim be granted.
B. Use of Name with Intent to Deceive Under N.Y. Gen. Bus. Law § 133
New York General Business Law § 133 forbids the adoption of “a corporate, assumed, or trade name . . . which may deceive the public as to the identity of such person, firm or corporation.” “An indispensable element of a claim alleged under § 133 is ‘intent to deceive the public.'” Perfect Pearl Co. v. Majestic Pearl & Stone, Inc., 887 F.Supp.2d 518, 542 (S.D.N.Y. 2012). There is no evidence that suggests that Defendant adopted the mark “Enchante Home” in bad faith or with an intent to deceive the public, and so I recommend that Defendant's motion for summary judgment on this claim be granted.
C. Injury to Business Reputation Under N.Y. Gen. Bus. Law § 360-l
New York General Business Law § 360-1 “requires plaintiff to prove ‘(1) that it possess[es] a strong mark-one that has a distinctive quality or has acquired a secondary meaning . . . and (2) a likelihood of dilution by either blurring or tarnishment.” RVC Floor Decor, 527 F.Supp.3d at 330 (quoting Fireman's Ass'n of State of N.Y. v. French Am. Sch. of N.Y., 41 A.D.3d 925, 928 (3d Dep't 2007)).
“Tarnishment occurs when the senior user's trademark suffers negative associations because of the junior user's market activities,” including where the “‘trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner's product.'” Paco Sport, Ltd., 86 F.Supp.2d at 329 (quoting Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994)).
Blurring occurs “where the defendant uses or modifies the plaintiff's trademark to identify the defendant's goods and services, raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product.” N.Y. Stock Exch., Inc. v. N.Y., N.Y. Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002) (internal quotation marks omitted). Courts look to six factors, including: (i) the similarity of the marks; (ii) the similarity of the products covered; (iii) the sophistication of the consumers; (iv) the existence of predatory intent; (v) the renown of the senior mark; and (vi) the renown of the junior mark. Id. While the first five factors closely track the analogous Polaroid factors, the renown of the junior mark addresses the possibility that “a junior mark may become so famous that it will overwhelm the senior mark.” Paco Sport, Ltd., 86 F.Supp.2d at 330.
While Plaintiff's “arbitrary” mark is inherently distinctive, Plaintiff has not made a showing that Defendant's product is of “shoddy quality” such that it would tarnish Plaintiff's mark, or that Defendant's mark is so popular that it is likely to overwhelm Plaintiff's. Id. at 32930. As such, I recommend that Defendant's motion for summary judgment on this claim be granted.
IV. Evidentiary Challenges
At summary judgment, the court should consider only evidence that would be admissible at trial. See Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 164 F.3d 736, 746 (2d Cir. 1998). “[W]here a party relies on affidavits . . . to be establish facts, the statements ‘must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant . . . is competent to testify on the matters stated.” DiStiso v. Cook, 691 F.3d 226, 230 (2d Cir. 2012) (quoting Fed.R.Civ.P. 56(c)(4)).
Plaintiff raises more than 50 objections to Defendant's evidence. Even if these objections were sustained (and many would not be), the Court would still reach the same recommendation. Accordingly, the interests of judicial economy are not served by addressing these challenges.
CONCLUSION
I recommend that the parties' cross-motions for summary judgment on Plaintiff's federal trademark infringement claim be DENIED. I also recommend that the Court DENY Defendant's motion for summary judgment on Plaintiff's trademark infringement claim under New York common law. Finally, I recommend that Defendant's motion on Plaintiff's state law claims for unfair competition, use of name with intent to deceive, and injury to business reputation be GRANTED.
NOTICE OF PROCEDURE FOR FILING OBJECTIONS TO THIS REPORT AND RECOMMENDATION
The parties shall have fourteen days from the service of this Report and Recommendation to file written objections pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure. A party may respond to another party's objections within fourteen days after being served with a copy. Fed.R.Civ.P. 72(b)(2). Such objections shall be filed with the Clerk of the Court, with courtesy copies delivered to the chambers of the Honorable Gregory H. Woods at the United States Courthouse, 500 Pearl Street, New York, New York 10007, and to any opposing parties. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), 6(d), 72(b). Any requests for an extension of time for filing objections must be addressed to Judge Woods. The failure to file these timely objections will result in a waiver of those objections for purposes of appeal. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), 6(d), 72(b); Thomas v. Arn, 474 U.S. 140 (1985).