Summary
finding that the party's one paid advertisement, two mentions in trade journals, and one appearance at a trade show was insufficient commercial promotion to create common-law trademark rights
Summary of this case from Burns v. Realnetworks, Inc.Opinion
00 CIV. 7909 (DLC).
July 23, 2001.
For Plaintiff: John P. Bostany, The Bostany Law Firm, New York, NY.
For Defendant Jansport, Inc.: Thomas A. Canova, Gianni P. Servodidio, Pennie Edmonds LLP, New York, NY.
OPINION AND ORDER
Plaintiff Momentum Luggage Leisure Bags ("Momentum") filed this action on October 17, 2000, and moved for a temporary restraining order and preliminary injunction, seeking to enjoin defendants' use of plaintiff's alleged trademark — "Momentum" — in connection with the promotion of a line of luggage defendant Jansport, Inc. ("Jansport") introduced in 2000. At an initial conference on October 19, 2000, plaintiff requested expedited discovery in lieu of a preliminary injunction. This Opinion addresses Jansport's motion for summary judgment, which followed the close of discovery.
Plaintiff has voluntarily discontinued its claims against Business Journals, Inc. and Luggage Leather Goode Manufacturers of America, Inc.
Pursuant to the Court's Pretrial Scheduling Order of October 23, 2000, discovery was to be completed by February 23, 2001, and the parties were placed on the April trial ready calendar.
In its complaint, plaintiff asserts that it "developed the Momentum trademark to identify a line of luggage and bags, which Momentum has marketed, sold and advertised widely." (emphasis supplied). Plaintiff alleges that it "has and continues to prominently display the 'Momentum' trade dress and trademark for its Momentum luggage products," and that "Momentum has extensively advertised and promoted the Momentum luggage by its trade dress and trademarks in various media in the United States." (emphasis supplied). The complaint further alleges that, based on plaintiff's "continuous and exclusive use of the trade dress and trademark, the extensive advertisement and promotion of the luggage sold using its trade dress and trademark, and its sales, the purchasing public has come to associate Momentum as the source and sponsor of the Momentum line of luggage marketed as Momentum luggage." (emphasis supplied).
Plaintiff's complaint alleges that the "the Momentum trade dress is the word mark itself used to identify Momentum's line of luggage and bags." Since plaintiff's "trade dress" claim is solely an assertion that the word "Momentum" was infringed, a discussion of plaintiff's trademark claim will fully address any trade dress rights asserted here.
In sharp contrast to its allegations, the record submitted on this summary judgment motion shows that plaintiff's "use" of the "Momentum" mark in connection with anything that could be liberally construed as luggage has consisted of one sale in 1999, of a few tote bags and briefcases and one paid advertisement for a tote bag in 1999, in a trade journal. Notwithstanding these meager activities, plaintiff alleged that Jansport violated the Lanham Act and New York's General Business Law by infringing plaintiff's trade dress, diluting plaintiff's trademark, and engaging in acts of unfair competition, false designation of origin, and false description or representation. For the reasons set forth below, Jansport's motion for summary judgment is granted.
BACKGROUND
The following facts are undisputed unless otherwise noted. Plaintiff is a partnership between Robert Rudko ("Rudko") and William Greystone ("Greystone"). As noted, plaintiff claims trademark rights in the name "Momentum," which is the name of its partnership and the name used in connection with its one sale of "luggage and bags in 1999. Plaintiff owns no federal or state trademark registration for the name "Momentum."
The plaintiff's business arose in the mid-1990s from discussions between Rudko and Greystone about forming a company to sell high-end leather cellular telephone cases. To create the appearance of an established business, they rented a mail box from Mail Boxes, Etc. at 244 Madison Avenue in Manhattan to use as the company address.
Rudko and Greystone filed partnership papers in 1996, using Greystone's parents' address in Long Island, New York, where Greystone lived at the time. The name of the partnership was "Celmate." During 1996, neither Rudko nor Greystone devoted their full time to the partnership. During their free time, however, Greystone measured cellular telephone dimensions and prepared drawings, and Rudko engaged in "office activities," such as paying a bill for a piece of leather. The business was operated out of the partners' homes. Plaintiff made no sales in 1995, and made two sales in 1996, which totaled about $1300 to $1500. Plaintiff did not pay for any advertising or promotional efforts, but received "photographic consideration" and "small write-ups" for the cellular telephone cases in two trade magazines. Plaintiff did not market its products in 1997, and lost between $10,000 and $50,000 that year.
Rudko has worked at various jobs over the last twelve years, since graduating from high school. Greystone has worked as a salesperson in the luggage department of Bloomingdale's for the past six years.
In 1997, Rudko and Greystone decided to switch their focus and to develop a business to sell high-end leather luggage pieces and call the luggage collection "Momentum." Greystone chose the name "Momentum" to identify both the partnership and luggage because he had "always liked the name and equated it with a fast"
pace such as the pace of New York." They changed the partnership name from Celmate to Momentum on April 5, 1999.
Before 1999, plaintiff kept its Momentum name "confidential," and its first attempt to sell any products bearing the mark Momentum was on February 18-20, 1999, at the first luggage trade show that either Rudko or Greystone had ever attended, the International Travelgoods, Leather and Accessories ("ITLA") trade show in Florida. It had ordered five to seven sample tote bags, satchels, and a small,"computer style briefcase" — all made out of "crinkle vellenium," a micro fiber used in raincoats — about three weeks before the show. At the show, plaintiff shared booth space with another exhibitor. Plaintiff made no sales at the trade show. The ITLA is only open to members of the luggage industry and is not open to the general public.
Plaintiff made two invoiced sales of leather envelopes in 1998, under the company name Celmate/Momentum to a store in Manhattan. These envelopes did not bear the "Momentum" mark. The gross sales from plaintiff's business activities in 1998 totaled approximately $800.
In his deposition testimony, Rudko stated that plaintiff did not make any sales at the trade show. Long after his deposition and in connection with the filing of his papers opposing this motion, Rudko corrected his answer in an errata sheet to assert that plaintiff wrote its "original Sam Flax order" at the show. In his affidavit submitted with plaintiff's opposition papers, Rudko states that this order was for "a dozen of our portfolio style envelopes." Jansport claims not only that the errata sheet was produced more than 30 days after the deposition, and thus not admissible under Rule 30(e), Fed.R.Civ.P., but has also submitted a declaration from Rolf Fjord, an employee of Sam Flax, the alleged purchaser at the trade show. Fjord states that his company did not order any goods from Momentum at the trade show.
Plaintiff's only paid advertisement for its Momentum products or business was a quarter-page advertisement for a tote bag in the March/April 1999 issue of Travelware magazine. Plaintiff also had several unpaid mentions, product photographs, and directory listings in issues of the trade magazines Travelware and Showcase International. None of these publications resulted in any sales.
The word "Momentum" does not appear on the tote bag pictured in the advertisement, but is a significant feature of the advertisement.
Travelware has over 12,000 subscribers and is published seven times a year. Showcase International is now known as Travel Goods Showcase, and is published by Travel Goods Association (formerly Luggage Leather Goods Manufacturers of America, Inc.) six times a year. The trade journal is not available on newsstands or otherwise available to the general public. Rather, the 12,000 subscribers are industry members, such as manufacturers, sales representatives, wholesalers, distributors, and retail stores. The journal is also distributed to about 1,500 members of the trade and consumer press.
Plaintiff has made only one arms-length sale of anything that could be loosely termed luggage. On July 19, 1999, plaintiff sold six tote bags and two briefcases for $760 to a retail store named Max Tamara after Greystone walked into the store on his lunch hour to peddle the products. According to Greystone, these products were embossed with the "Momentum logo," which is the word "Momentum" in capital letters. Max Tamara is a high-end boutique in Manhattan, which specializes in designer handbags. The owner of Max Tamara had not previously heard of the Momentum company or product line. After July 1999, plaintiff did not sell any more "luggage" to Max Tamara. In 1999, plaintiff also made one invoiced sale of leather envelopes to an art supply store in Manhattan. These envelopes did not bear the trademark Momentum. Momentum's gross sales in 1999 were approximately $1400 to $1500.
In an Opinion of February 1, 2001, the Court precluded certain documentary evidence produced by plaintiff, pursuant to Rule 37, Fed.R.Civ.P. Momentum Luggage Leisure Bags v. Jansport. Inc., No. 00 Civ. 7909, 2001 WL 91707, at *2 (S.D.N Y Feb. 1, 2001). The Court found that such a severe sanction was necessary where, as here, plaintiff had failed to participate in discovery in good faith — discovery which plaintiff requested proceed on an expedited basis. Further, the Court found that plaintiff's delay in producing discovery had prejudiced Jansport.
The only evidence of any "logo" in the record is the word "Momentum" in plaintiff's one paid advertisement and the testimony from Greystone that some of the bags sold to Max Tamara in 1999 were embossed on the front with the "Momentum" mark. While plaintiff concedes that the leather envelopes it sold in the past did not have the "Momentum" mark on them, it has submitted a sample leather envelope which is embossed with the name "Momentum" on the inside as an example of its "logo." In both the advertisement and the sample envelope submitted with plaintiff's opposition papers, the "logo" is simply the word "Momentum" in capital letters.
While plaintiff asserts that it received payment from several individuals for Momentum tote bags in 1999, these were not arms-length transactions. They were undocumented cash transactions to friends for which the plaintiff has no invoices. Rudko also states that plaintiff made a sale of two leather envelopes to the U.S. House of Representatives in 2000, and he attaches to his affidavit a copy of a check, dated March 12, 2001, made payable to "Momentum Leather" from New York Representative Michael P. Forbes.
Plaintiff's complaint alleges that Jansport infringed on its "luggage and bags." It does not mention envelopes.
In 2000, plaintiff did not solicit any sales of luggage or tote bags and made no invoiced sales of any luggage or tote bags. According to Rudko, Momentum focused exclusively on selling envelopes. Plaintiff made three invoiced sales of leather envelopes to an art supply store and a designer leather goods store in Manhattan. The name "Momentum" was not on these envelopes; its gross sales for all of its business activities in 2000, totaled approximately $1500. Although plaintiff asserts that it is expecting to launch a luggage line in late August 2001, it has no sales orders or inventory. Further, there is no evidence that the "Momentum" mark will be placed on the luggage itself or on point of sale materials.
Momentum states that it has formed a joint venture with The White Mountain Stitching Company for its fall 2001 luggage collection, but has not produced any evidence aside from Rudko's statements in his affidavit and an unsworn, un-notarized statement from Scott Manning, the general manager of White Mountain Stitching.
Defendant Jansport is one of the world's largest manufacturers of backpacks with annual sales of Jansport branded products of approximately $200 million. Jansport spends about $5 million a year on advertising the Jansport brand in the United States alone. It is not disputed that the "Jansport" brand name is "famous" in the United States.
In 1998, Jansport began to develop a new line of nylon luggage as a natural expansion of its backpack business. In August 1999, Jansport selected the designation "Momentum" as its "collection" name for the new Jansport luggage line. Jansport has never used the name "Momentum Collection," however, on any of the luggage itself. Nor has Jansport used the name on any hang tags, point of sale materials, or on anything that would be seen by consumers. The only name that appears on Jansport's luggage or its hang tags for its luggage is "Jansport."
A market research firm proposed the name "Momentum" to Jansport. The firm was not aware of plaintiff's company.
Jansport has used the name "Momentum" or "Momentum Collection" in connection with promotional materials distributed to the trade, such as a wholesale catalog, purchase order form, CD-Rom, and trade show literature. Jansport distributed these materials to its sales representatives and certain members of the luggage trade. The name "Momentum" appears twice in the 18-page Jansport luggage catalog for the year 2000. Jansport has never used the name "Momentum" by itself without the "Jansport" brand name. Jansport uses "collection" names such as "Momentum" to differentiate among its various product lines. Collection names typically serve as stand-ins for style numbers, which are a combination of numbers and letters. The use of collection names is a common practice. Indeed, plaintiff has used the collection name "Tribeca" even though it was aware that another company used that name for its luggage business.
Jansport's new luggage line includes staple luggage pieces such as 20 and 24 inch Pullmans, a flight bag, and a garment bag. Its luggage is sold at a lower price point than the higher-end luggage such as Louis Vuitton, Gucci, Prada, Tumi, and Hartman. The majority of Jansport's sales of luggage have been to (1) a large, discount chain department store; (2) outdoor recreational chain stores; and (3) specialty stores.
In late July 2000, Rudko left a message with a receptionist at Jansport, claiming that plaintiff owned a business named "Momentum" on Madison Avenue in New York City. After receiving plaintiff's phone call, Jansport revised its promotional materials for its upcoming December 2000 holiday promotion and for its 2001 luggage line by removing any reference to the designation "Momentum" or "Momentum Collection."
There is no evidence of consumer confusion and plaintiff has conceded that there has been no actual confusion. There is also no evidence that Momentum lost any sales because of Jansport's use of the name "Momentum" for its line of luggage.
During discovery, plaintiff repeatedly represented that it had no knowledge of any actual confusion. In opposition to this motion, Momentum has submitted several nearly identical affidavits from Greystone's co-workers at Bloomingdale's, which state that they saw Jansport's advertisements for the "Momentum Collection" in trade magazines and believed plaintiff had licensed the name to Jansport.
Several companies besides Jansport have also used the "Momentum" name in connection with their products. A manufacturer named The Coleman Company sells a "Momentum" branded backpack, which has been on the market for two years, and a manufacturer named Outdoor Products sells a "Momentum" wheeled backpack with a retractable luggage handle, which has been on the market since the fall of 2000. A luggage manufacturer named Skyway Luggage filed a federal trademark application for the mark "Momentum" for luggage in 1999, but withdrew the application after Rudko told one of its representatives that it owned trademark rights in the name "Momentum."
DISCUSSION
Summary judgment may not be granted unless the submissions of the parties, taken together, "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Rule 56(c), Fed.R.Civ.P. The substantive law governing the case will identify those issues that are material, and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 248 (1987). The moving party bears the burden of demonstrating the absence of a material factual question, and in making this determination the Court must view all facts in the light most favorable to the nonmoving party. See Azrielli v. Cohen Law Offices, 21 F.3d 512, 517 (2d Cir. 1994). When the moving party has asserted facts showing that the nonmovant's claims cannot be sustained, the opposing party must "set forth specific facts showing that there is a genuine issue for trial," and cannot rest on the "mere allegations or denials" of his pleadings. Rule 56(e), Fed.R.Civ.P. See also Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d Cir. 1995)
A. Common Law Trademark Rights
Jansport argues that Momentum's de minimus activities did not create common law trademark rights in the word "Momentum." Although plaintiff contends it has continuously exploited the mark "Momentum" since February 1999, in connection with luggage, it has advertised a tote bag once and has only shown one sale of six tote bags and two briefcases. Its informal and sporadic sales activity does not constitute sufficient use of a trademark in commerce to qualify for Lanham Act protection.
Section 43(a) of the Lanham Act provides a cause of action against any party who
in connection with any goods . . . or any container for goods, uses in commerce any word, term, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive . . as to the origin, sponsorship or approval of his or her goods . . . by another person.15 U.S.C. § 1125(a) (emphasis supplied). The Lanham Act defines "use in commerce" as:
the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. (A] mark shall be deemed to be in use in commerce on goods when it is placed in any manner on the goods . . . or the displays associated therewith or on the tags or labels affixed thereto . . . and the goods are sold or transported in commerce.15 U.S.C. § 1127; United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918); Buti v. Perosa. S.R.L., 139 F.3d 98, 103 (2d Cir. 1998).
To prevail on a Lanham Act infringement claim, a plaintiff must satisfy two elements: it must demonstrate that ""it has a valid mark entitled to protection and that the defendant's use of it is likely to cause confusion.'" Morningside Group Ltd. v. Morningside Capital Group, 182 F.3d 133, 137 (2d Cir. 1999) (citation omitted). Thus, plaintiff must first show that its mark is entitled to Lanham Act protection. As the Supreme Court stated, "the right to a particular mark grows out of its use, not its mere adoption." United Drug, 248 U.S. at 97. See Buti, 139 F.3d at 103. Further,
[u]nder familiar trademark principles, the right to exclusive use of a trademark derives from its appropriation and subsequent use in the marketplace. The user who first appropriates the mark obtains an enforceable right to exclude others from using it, as long as the initial appropriation and use are accompanied by an intention to continue exploiting the mark commercially.LaSociete Anonyme des Parfums Le Galion v. Jean Patou. Inc., 495 F.2d 1265, 1271 (2d Cir. 1974) (emphasis supplied). Because "the right to a particular mark grows out of its use, . . . [t]o prove bona fide usage, the proponent of the trademark must demonstrate that his use of the mark has been deliberate and continuous, not sporadic, casual or transitory." Id. at 1271-72. See Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315-16 (3d Cir. 1999); Larsen v. Terk Techs. Corp., 151 F.3d 140, 146 (4th Cir. 1998). Accordingly, the Second Circuit has observed that
"[t]rademark rights are not created by sporadic, casual, and nominal shipments of goods bearing a mark. There must be a trade in the goods sold under the mark or at least an active and public attempt to establish such a trade. Absent these elements, no trademark can be created or exist."LaSociete Anonyme, 495 F.2d at 1274 (citation omitted). See Lucent Info., 186 F.3d at 317-18 (plaintiff did not acquire common law trademark rights in mark where plaintiff made only one sale using mark and promotional activities were limited to sending out announcement of new business and making several product presentations).
The activities in which Momentum engaged can be divided into two categories: (1) advertising and promotion, and (2) sales. Neither of these activities, taken singly or together, were sufficient to create ownership rights in the "Momentum" mark.
Despite plaintiff's allegations in the complaint that its "luggage and bags" were "marketed . . . and advertised widely," this was not the case. Momentum exhibited at one luggage trade show two years ago, paid for one advertisement for Momentum luggage, and had several mentions in two trade journals. While Momentum argues that it should not be penalized for its "word of mouth" marketing, door-to-door sales calls, or lack of significant paid advertising, Momentum's activities do not constitute sufficient commercial promotion to establish common law trademark ownership. See, e.g., Windows User. Inc. v. Reed Bus. Publ'g Ltd., 795 F. Supp. 103, 105, 109 (S.D.N.Y. 1992) (distributing a brochure with 50,000 copies of another publication and contacting 200 potential advertisers). Compare Marvel Comics Ltd. v. Defiant, a Division of Enlightened Entm't Ltd. 837 F. Supp. 546, 549 (S.D.N.Y. 1993) (denying motion to dismiss because plaintiff's allegations that title was announced to 13 million readers established necessary commercial use).
Momentum has never made any sale of products commonly classified as luggage. It made one invoiced sale of tote bags and briefcases for $760 in 1999, and did not attempt to solicit any sales for Momentum luggage or tote bags in 2000. Momentum claims that this one sale is enough to establish common law trademark rights in the "Momentum" name. While "a single use in trade may sustain trademark rights if followed by continuous commercial utilization," Blue Bell v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975), plaintiff's commercial use of its mark has been too sporadic to create such rights. For example, the Second Circuit has found that a plaintiff's 89 sales in 20 years was not "the kind of bona fide use intended to afford a basis for trademark protection." LaSociete Anonyme, 495 F.2d at
Plaintiff made one sale of leather envelopes in 1999, and three sales in 2000. Plaintiff made no profit and $1400- $1500 in gross revenue in 1999, and made no profit and $1500 in gross revenue in 2000.
1272. The Court noted that the plaintiff had not "put its product on the market in any meaningful way," and had given "no indication that it has any current plans to do so." Id. at 1272- 73. See Jaffe v. Simon Shuster Inc., 3 U.S.P.Q.2d 1047, 1049, No. 86 Civ. 1577 (GLG), 1987 WL 124312 (S.D.N.Y. Jan. 16, 1987) (granting summary judgment for defendant, finding that sales to personal friends and relatives do not constitute ownership of the mark and that federal trademark laws are not invoked by a small shipment of goods between business associates).
The conclusion that the plaintiff's limited activities do not constitute a "use in commerce" is underscored by an analysis of its claim that its trademark rights extend across the nation. The Third Circuit has set out a test for determining whether a party has established common law trademark rights in a specific geographic area: (1) volume of sales; (2) growth trends; (3) the number of persons purchasing the product in relation to the potential number of purchasers; and (4) the amount of product advertising. Lucent Info., 186 F.3d at 317.
Applying these four factors to plaintiff's evidence, each weighs against Momentum: (1) Momentum's sale volume was de minimus; (2) because it made only one sale, there is no growth trend to review, see Lucent Info., 186 F.3d at 317; (3) there are many potential customers for luggage and bags, but only one retailer purchased eight items; and (4) Momentum's advertising and promotion were sporadic and limited. InNatural Footwear, the Third Circuit found that no trademark rights were established by the defendant's "de minimus" sales, which the court defined to be gross sales of less than $5,000 and to less than 50 customers for any state in at least two of three years for which there was data. Natural Footwear Ltd. v. Hart. Schaffner Marx, 760 F.2d 1383, 1400 (3d Cir. 1985) (denying nationwide injunction). See also Zazuacute Designs v. L'Oreal. S.A., 979 F.2d 499, 503 (7th Cir. 1992) (plaintiff's few sales over the counter in Illinois and a few items mailed to friends in Texas and Florida insufficient to create rights); Jaffe 3 U.S.P.Q.2d at 1049 (nominal sales to friends and relatives did not constitute bona fide commercial use).
Finally, it is relevant to place the paucity of plaintiff's sales and advertising in the context of its commercial activities as a whole. For example, plaintiff has never leased office space, operates its business out of a residential apartment shared by Rudko and Greystone, and rents a mail box at "Mail Boxes, Etc." on Madison Avenue to give the impression that it has an established business. Plaintiff has no manufacturing or warehousing facilities and keeps its inventory of cellular telephone covers and other items in Rudko and Greystone's apartment. Further, plaintiff does not have any distribution or delivery arrangement, and instead uses the United States Postal Service or, in the case of the 1999 sale to Max Tamara and the 2000 sales of leather envelopes to Sam Flax, personal delivery. Finally, Greystone is employed full time by another company, and Momentum has not reported any income over the past two years. See, e.g., Merry Hull Co. v. Hi-Line Co., 243 F. Supp. 45, 48, 52 (S.D.N.Y. 1965) (where plaintiff had no telephone listing, did no advertising, had no factory, had no reportable income from sales, did not sell to any department stores, and sold to relatives and personal friends, plaintiff "was not operating such a bona fide commercial operation as would entitle it to claim ownership of the mark it used").
In sum, Momentum has not raised a genuine issue of material fact that it has made deliberate and continuous use of the "Momentum" mark in commerce in connection with "luggage" or bags. It has failed to present sufficient evidence to support a claim that it has a valid mark entitled to protection in connection with the sale of luggage.
B. Trademark Infringement
Since plaintiff has not demonstrated that it has a valid mark entitled to protection, its Lanham Act claim for infringement must be dismissed.See Morningside Group, 182 F.3d at 137. Even if plaintiff owned common law trademark rights in the "Momentum" mark, however, its federal claim for trademark infringement would fail because it has not shown that Jansport's use of the "Momentum" mark is likely to cause confusion. To establish a trademark infringement claim under the Lanham Act, a plaintiff must prove that "'numerous ordinary prudent purchasers are likely to be misled or confused'" because of the defendant's mark.Cadbury Beverages. Inc. v. Cott Corp., 73 F.3d 474, 477-78 (2d Cir. 1996) (citation omitted). A finding of infringement must be supported by "a probability of confusion, not a mere possibility." Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). See also Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997).
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), identifies eight non-exhaustive factors relevant to the likelihood of confusion inquiry: (a) the strength of the plaintiff's mark; (b) the degree of similarity between the plaintiff's and the defendant's marks; (c) the proximity of the products; (d) the likelihood that the plaintiff will bridge the gap, using the mark on products closer to the defendant's area of commerce; (e) the sophistication of the buyers; (f) the quality of the defendant's product; (g) actual confusion; and (h) the defendant's good or bad faith. See TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 100 (2d Cir. 2001). No single one of these factors is dispositive. Morningside Group, 182 F.3d at 139. Further,
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.' Rather, a court should focus on the ultimate question of whether consumers are likely to be confused.Paddington Corp. V. Attiki Importers Distribs., Inc., 996 F.2d 577, 584 (2d Cir. 1993) (citation omitted). Summary judgment is appropriate where the undisputed evidence would lead only to one conclusion under thePolaroid test as to whether confusion is likely. Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996); Cadbury Beverages, Inc., 73 F.3d at 478. Strength of the Mark.
"The strength of a mark refers to its distinctiveness, that is to say, the mark's ability to identify goods sold under it as coming from one particular source." Streetwise Maps, 159 F.3d at 743. In determining a mark's inherent distinctiveness, this Court uses the familiar typology developed by Judge Friendly in Ambercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), under which a mark is classified in one of four categories "progressing from least to most distinctive: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful." TCPIP Holding, 244 F.3d at 93.
Although plaintiff argues that its mark is arbitrary, at most, the "Momentum" mark is suggestive. Suggestive marks require "imagination, thought and perception to reach a conclusion as to the nature of goods."Time, Inc. v. Petersen Publ'g Co., 173 F.3d 113, 118 (2d Cir. 1999) (citation omitted) Greystone stated in his deposition that he selected the "Momentum" name because it described "movement" and "motion." Although this explanation might support Jansport's argument that the name is merely descriptive, the Court concludes that it requires some degree of imagination to relate the "Momentum" name to luggage. As a consequence, there is no need to prove secondary meaning. "Marks that do not directly describe goods . . . or their attributes, but rather are suggestive of them, have some distinctive quality and are thus protected without need to prove secondary meaning." TCPIP Holding, 244 F.3d at 94.
"Suggestiveness, however, does not necessarily determine the issue regarding the strength of the mark. [Courts] must still consider the mark's distinctiveness in the marketplace." Streetwise Maps, 159 F.3d at 744 (citation omitted). "Momentum" is not distinctive in the marketplace. As described above, other manufacturers of luggage and bags have used the "Momentum" mark in the sale of their products. Such third-party use weakens the strength of plaintiff's mark. See id.; Lang v. Retirement Living Publ'g Co., 949 F.2d 576, 581 (2d Cir. 1991). Moreover, the plaintiff has none of the classic indicia of a strong mark, such as extensive sales or advertising. See Charles of the Ritz Group Ltd. v. Quality King Distribs., Inc., 832 F.2d 1317, 1321 (2d Cir. 1987). Thus, while plaintiff's mark is suggestive, it is a weak mark.
Similarity of the Marks
To assess the similarity between two marks, the Court considers whether the similarity is likely to cause consumer confusion. Morningside Group, 182 F.3d at 139-40. The similarity of marks is determined by evaluating a mark in its entirety, and in the context in which it is presented. Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 394 (2d Cir. 1995).
Compared in their entirety, plaintiff's use of the "Momentum" name and Jansport's use of the "Momentum" or "Momentum Collection" name are not confusingly similar. Although both the plaintiff and Jansport use an identical word, Jansport did not use the designation "Momentum" as a brand name trademark or anywhere on the luggage pieces themselves, on the hang tags, or on any advertising or promotion directed at consumers. Jansport instead used "Momentum" as a descriptive collection name, and did so only in promotional materials distributed to the trade. Finally, Jansport never used the designation "Momentum" or "Momentum Collection" without the prominent use of the "Jansport" brand name. It always has the brand name "Jansport" on each piece of luggage. Prominent use of a famous brand name "significantly reduces, if not altogether eliminates, the likelihood that consumers will be confused as to the source of the parties' products." Nabisco. Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000). See W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) (finding the marks "Sportstick" and "Right Guard Sport Stick" not confusingly similar because of the use of the company name). Thus, this factor favors Jansport.
Proximity and Likelihood of Bridging the Gap
Under the Polaroid factors addressing the proximity of the marks and the likelihood of bridging the gap, the Court considers the nature of the products themselves, whether and to what extent the two products compete with each other, the structure of the relevant market, and whether a plaintiff is likely to enter defendant's market or "bridge the gap," recognizing "the senior user's interest in preserving avenues of expansion and entering into related fields." Morningside Group, 182 F.3d at 140-41.
As noted above, plaintiff's only invoiced sale of anything that could loosely be considered "luggage" was the one sale of six tote bags and two briefcases. Jansport's accused product line is a line of staple luggage, with standard pieces such as 20 inch and 24 inch "Pullmans" and garment bags. It is undisputed that Jansport's luggage does not compete with high-end designer luggage and is instead sold at a lower price point at large discount chain department stores and outdoor sports and recreational chain stores. Rudko testified that he wanted plaintiff's products to be "different" from the type of staple luggage sold in discount chain department stores, which are among Jansport's largest customers. Indeed, plaintiff's one invoiced sale of luggage was to a high-end, women's boutique on the East Side of Manhattan that sells primarily leather handbags. The parties' goods are sold through different channels of trade, target different customers, and do not directly compete with one another. To the extent plaintiff intends to reenter the "luggage" market later this year, it intends to sell "high-end" products. Nonetheless, drawing all inferences in plaintiff's favor, both parties have or will have used the mark in connection with luggage. Thus, these factors weigh in favor of Momentum. Sophistication of the Buyers
Plaintiff argues in its memorandum of law that it and Jansport target the same customers since they both have targeted the same luggage retailer. Plaintiff offers no evidence of this.
Likelihood of confusion "must be assessed by examining the level of sophistication of the relevant purchasers" of the plaintiff's and defendant's products. Sports Auth., 89 F.3d at 965 (citation omitted). Here, both plaintiff's and defendant's products are relatively expensive, and consumers can be expected to inspect them before making a purchase. When doing so, consumers would see the brand name "Jansport," but not the mark "Momentum" on defendant's products. The more relevant class of purchasers likely to have encountered the "Momentum" mark for either party's products are sales representatives and retailer customers. These are sophisticated buyers who would be able quickly to differentiate the plaintiff's and defendant's products.
Quality of Defendant's Product
Under this factor, the Court examines "whether defendant's products . . . are inferior to plaintiff's, thereby tarnishing plaintiff's reputation if consumers confuse the two." Morningside Group, 182 F.3d at 142. Plaintiff has produced no evidence that defendant's products are of an inferior quality to those offered by it.
Actual Confusion
There is no evidence in this case of a single instance of actual confusion, and plaintiff has conceded that there has been no actual confusion between its products and Jansport's. Defendant's Good Faith
"An inference of a lack of good faith may arise from a defendant's use of a plaintiff's mark with the intent to trade upon the good will represented by that mark." EMI Catalogue P'ship v. Hill, Holiday, Connors, Cosmopulos Inc., 228 F.3d 56, 67 (2d Cir. 2000). Here, there is no evidence of any bad faith by Jansport.
There is no evidence that Jansport knew of plaintiff's business or products before its chose the "Momentum" name for its luggage collection. In fact, after receiving plaintiff's telephone call in July 2000, and learning of plaintiff's alleged trademark rights, Jansport decided to stop using the "Momentum" name with respect to its luggage line, changed its catalog to remove any reference to "Momentum," and contacted retailer customers who used "Momentum" and requested that they stop such use.
Although Jansport did not conduct a full trademark search for the "Momentum" mark, the failure to conduct such a search does not on its own constitute bad faith. Streetwise, 159 F.3d at 746.
Plaintiff relies entirely on the speculation that Jansport must have noticed references to plaintiff in two trade publications in 1999, and that Jansport's president must have noticed plaintiff's name on a list of 70 attendees at a 1999 trade conference. Where, as here, plaintiff has had the opportunity to engage in discovery, its "speculative allegations" do not raise a genuine issue of material fact sufficient to survive summary judgment. Resource Developers v. Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 141 (2d Cir. 1991). Even though "[i]ssues of good faith are generally
ill-suited for disposition on summary judgment," Lang, 949 F.2d at 583 (citation omitted) in this case, plaintiff has failed to introduce any evidence of defendant's bad faith. See Resource Developers, 926 F.2d at 141 (affirming summary judgment where no material factual issue as to defendant's intent)
In sum, when considered together, the Polaroid factors favor the defendant. The plaintiff has failed to present evidence that would prevent the entry of summary judgment for Jansport. The plaintiff has failed to present evidence that numerous ordinary prudent purchasers are likely to be confused by Jansport's use of the word "Momentum" to describe its luggage line.
C. Unfair Competition
The failure of plaintiff's trademark claim, in particular its failure to establish trademark rights in the word "Momentum," is not necessarily fatal to its federal unfair competition claim. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (2d Cir. 1998). "Regardless of whether a term is trademarked, a plaintiff may show that the term name is so associated with its goods that use of the same or similar term by another company constitutes a representation that its goods come from the same source." Id. at 149-50 (citation omitted). Nonetheless, based on the preceding discussion, plaintiff has failed to raise a genuine issue of material fact as to the association of the "Momentum" name with its business or its products. It has offered no evidence beyond the statements of Greystone's coworkers and a personal acquaintance of Rudko as to the recognition of Momentum's name or luggage products in either the luggage trade or in the minds of consumers. Plaintiff's federal claim for unfair competition is therefore dismissed.
Plaintiff brings claims for trademark infringement, trade dress infringement, misappropriation, and unfair competition under New York common law. "[T]he standards for trademark infringement . . . are essentially the same under the Lanham Act, New York law, and the common law." Tri-Star Pictures, Inc. v. Unger, 14 F. Supp.2d 339, 359 n. 18 (S.D.N Y 1998); Shaw v. Rizolli Int'l Publ'ns. Inc., No. 96 Civ. 4259 (JGK), 1999 WL 160084, at *8 (S.D.N.Y. Mar. 23, 1999) Similarly, "the standards for Section 43(a) claims of the Lanham Act and unfair competition claims under New York Law are almost indistinguishable."Tri-Star Pictures, 14 F. Supp.2d at 363; see also Genesee Brewing, 124 F.3d at 149; Ringling Bros. -Barnum Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 208-09 (S.D.N.Y. 1996). Thus, for the same reasons plaintiff's federal claims fail, its corresponding state law claims fail as well.
D. Dilution
Momentum complains that Jansport has diluted plaintiff's trademark. Section 43(c) of the Lanham Act, the Federal Dilution Act, provides remedies for the dilution of the distinctive quality of famous marks. 15 U.S.C. § 1125(c). To prove this claim, a plaintiff must show,inter alia, that its mark is famous and inherently distinctive. 15 U.S.C. § 1125(c)(1); TCPIP Holding, 244 F.3d at 93, 95. As a matter of law, plaintiff's mark is not famous and is not entitled to protection under the Federal Dilution Act. See 15 U.S.C. § 1125(c)(1)(A)-(H); TCPIP Holding, 244 F.3d at 98-99. For the reasons explained above, plaintiff has failed to raise a genuine issue of material fact as to the fame of its "Momentum" mark.
To establish a claim for dilution under New York law, plaintiff must prove (1) ownership of a distinctive mark, and (2) likelihood of dilution. N.Y. Gen. Bus. Law § 360-1 (McKinney 1996); Sports Auth., 89 F.3d at 966. Since the Court has determined that plaintiff does not own the "Momentum" mark, plaintiff's claim for dilution fails as a matter of law. See generally Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1049 (2d Cir. 1992) (New York's anti-dilution statute protects only "extremely strong" marks). Even assuming that plaintiff owned the "Momentum" mark, however, it could not establish a dilution claim under New York law. Dilution can involve either "blurring or tarnishment." Sports Authority, 89 F.3d at 966. plaintiff contends that the "Momentum" mark has been tarnished by Jansport's actions and that blurring has occurred.
Tarnishment occurs when a trademark is ""linked to products of shoddy quality, ' . . .with the result that "the public will associate the lack of quality or lack of prestige in the defendant's goods with the plaintiff's unrelated goods.'" Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996) (citation omitted). Further, "[t]he sine qua non of tarnishment is a finding that plaintiff's mark will suffer negative associations through defendant's use." Id. Plaintiff has offered no evidence that Jansport'S products are of inferior quality or of any possible tarnishment of its products or its business by Jansport's use of the "Momentum" mark to identify its luggage collection.
Nor has plaintiff offered any evidence of blurring. 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.'" Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168, 175 (2d Cir. 2000) (citation omitted). As an initial matter, plaintiff has failed to offer any evidence that the "Momentum" mark is a "unique identifier of the plaintiff's product." Further, plaintiff has failed to show how Jansport's use of the "Momentum" mark will "blur" plaintiff's product identification.
E. Additional Discovery
Plaintiff seeks to avoid the entry of summary judgment against it by requesting further discovery. A party opposing a summary judgment motion will be entitled to further discovery before the motion will be considered when it submits an affidavit explaining:
1) the nature of the uncompleted discovery, i.e., what facts are sought and how they are to be obtained; and 2) how those facts are reasonably expected to create a genuine issue of material fact; and 3) what efforts the affiant has made to obtain those facts; and 4) why those efforts were unsuccessful.Burlington Coat Factory Warehouse Corp. v. Esprit De Corp., 769 F.2d 919, 926 (2d Cir. 1985). In addition, "[a] court can reject a request for discovery, even if properly and timely made through a Rule 56(f) affidavit, if it deems the request to be based on speculation as to what potentially could be discovered." Paddington Partners v. Bouchard, 34 F.3d 1132, 1138 (2d Cir. 1994).
Through the affidavit of its attorney, plaintiff requests additional discovery relating to the issues of Jansport's bad faith, continuing infringement, and profits, as well as the existence of confusion in the marketplace. Plaintiff does not state with any particularity what facts it expects the additional discovery to show, or how those facts are to be established. Nor does it state how those facts would create a material factual issue as to whether it has established ownership rights to the "Momentum" name. Most significantly, it does not explain why it was unable to obtain these facts during the period allotted for discovery.
Plaintiff also proposes serving subpoenas on Travelware andShowcase International to show the extent and geographic scope of plaintiff's and defendant's advertisements. Defendant submitted evidence on the extent and geographic scope of these publications.
The plaintiff's request to reopen discovery is denied. None of the topics the plaintiff seeks a second opportunity to explore would cure its failure to establish rights in the mark "Momentum" or otherwise affect the outcome of this motion.
CONCLUSION
For the reasons stated, defendant's motion for summary judgment is granted. Plaintiff's complaint is dismissed in its entirety.
SO ORDERED:
Id.