Opinion
Civil Action No. 3:00CV295 (CFD)
September 14, 2000
RULING ON THE PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION Introduction
This is an action for damages, injunctive relief, attorney's fees and costs. In a six count complaint, the plaintiff, Timex Corporation ("Timex") alleges that the defendant, AAI.FosterGrant, Inc. ("FosterGrant") committed the following violations of state and federal trademark law: (1) trademark infringement in violation of Section 32 of the Federal Trademark Act, 15 U.S.C. § 1114; (2) false designation of products in violation of Section 43(a) of the Federal Trademark Act, 15 U.S.C. § 1125 (a); (3) common law trademark infringement and unfair competition; (4) violation of the Connecticut Unfair Trade Practices Act ("CUTPA"), Conn. Gen. Stat. § 42-110(b); (5) trademark dilution in violation of Section 43(c) of the Federal Trademark Act, 15 U.S.C. § 1125 (c); and (6) trademark dilution in violation of Conn. Gen. Stat. § 35-111(c). Timex alleges that FosterGrant committed these violations through its unauthorized use of three Timex trademarks, EXPEDITION, ALL TERRAIN, and ADVENTURER.
The Federal Trademark Act was passed by Congress in 1905. In 1946, Congress passed the Lanham Act, which revised portions of the Federal Trademark Act and created additional protections for trademarks. See Park'N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 193 (1985). The titles "Federal Trademark Act" and "Lanham Act" are largely used interchangeably to refer to those provisions of Title 15 of the United States Code which concern trademarks. See e.g., Marriot Corp. v. Great America Service Trades Council, AFL-CIO, 552 F.2d 176, 178 (7th Cir. 1977); Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 567 (2d Cir. 1971); El Ranco, Inc. v. First National Bank of Nevada, 406 F.2d 1205, 1217 fn. 17 (9th Cir. 1969).
The plaintiffs proposed findings of fact do not address the ALL TERRAIN or ADVENTURER marks in any significant degree. See Plaintiffs Updated Proposed Findings of Fact at page 14, ¶ 78 (ALL TERRAIN and ADVENTURER) ¶ 79 (ALL TERRAIN). The plaintiffs proposed conclusions of law make no reference to either of these two marks. As such, the Court assumes that the plaintiff is not seeking an injunction on the basis of alleged infringement by the defendant of those marks. Accordingly, this ruling expresses no opinion concerning with respect to those two marks.
Pending is the plaintiffs motion for a preliminary injunction [doc. 114]. The plaintiff seeks an order enjoining the defendant from using the trademark EXPEDITION in any form, including FOSTERGRANT EXPEDITION, in connection with the manufacture, promotion, advertising or sale of eyeglasses, sunglasses or any other product and that the defendant be ordered to recall any and all sunglasses or other products bearing the mark EXPEDITION or FOSTERGRANT EXPEDITION..
The plaintiffs motion and submissions dealt solely with the merits of the plaintiffs federal trademark infringement and dilution claims. At the evidentiary hearing and oral argument, counsel for the plaintiff primarily focused on the federal trademark infringement claim and only submitted proposed findings of fact and conclusions of law on that claim. Accordingly, the Court concludes that the plaintiff seeks a preliminary injunction based upon the alleged trademark infringement by the defendant. This ruling does not express an opinion with respect to the plaintiffs other claims.
Based upon the written submissions filed by the parties and the evidence produced at the hearings on the plaintiffs motion and pursuant to Fed.R.Civ.P. 65, the Court makes the following findings of fact and conclusions of law.
Findings of Fact
A. The Parties Timex
1. Timex is a corporation organized and existing under the laws of Delaware and has its principal place of business in Middlebury, Connecticut.
2. Timex is engaged principally in the sale of watches and has also licensed use of its brands for related accessories.
3. Timex is a seller of watches in the United States with a market share of more than 30% and markets various watches under several trademarks. Timex's closest competitor holds only a 6% share of the market.
4. Timex is attempting to expand the use of its watch trademarks into other fashion accessories, including eyeglasses and sunglasses, through a licensing program.
FosterGrant
5. FosterGrant is a corporation organized and existing under the laws of Rhode Island and has its principal place of business in Smithfield, Rhode Island.
6. FosterGrant distributes optical products, costume jewelry, and other accessories to mass merchandisers, variety stores, chain drug stores and supermarkets in North America and the United Kingdom. Currently, FosterGrant carries approximately twenty different lines of optical products, amounting to over two hundred and fifty individual items.
7. Most of FosterGrant's products are priced at less than $20, with over 50% at $10 or less. FosterGrant markets its products under customers' private labels and its own brand names, most notably its famous mark FOSTERGRANT. One of these products is FOSTERGRANT EXPEDITION sunglasses, the product at issue in this case.
8. FosterGrant expects to realize at least $6-10 million in revenues from the sale of FOSTERGRANT EXPEDITION sunglasses. This would represent 8-13% of FosterGrant's projected $75 million in gross sunglass sales.
9. To date, FosterGrant has shipped approximately 160,000 units of FOSTERGRANT EXPEDITION sunglasses to retail outlets across the country and intends to ship approximately 520,000 additional units by December, 2000.
10. The cost and delay of removing FOSTERGRANT EXPEDITION sunglasses and display cases from the market would be significant. For example, replacing the product tags would cost FosterGrant hundreds of thousands of dollars and changing the displays would cost approximately $300,000 to $500,000. Were FosterGrant to take such measures, the potential lost sales and profits would be significant
B. The Development of TIMEX EXPEDITION
11. In 1994, Timex introduced a line of watches identified with the mark TIMEX EXPEDITION. TIMEX EXPEDITION watches have been and continue to be very popular.
Throughout their submissions, the parties refer to themselves as "Timex" and "FosterGrant," however, when referencing trademarks bearing their names they identify the mark in capital letters. The Court follows this practice throughout this opinion.
12. Since 1994, the number of available TIMEX EXPEDITION styles has expanded from three to more than one hundred.
13. Timex has expended significant resources to promote the TIMEX EXPEDITION brand, with its advertising budget comprising 25% of the company's overall advertising budget.
14. More than 6% of all watches sold in the United States in 1999 were TIMEX EXPEDITION brand watches.
C. The Development of FOSTERGRANT EXPEDITION
15. In 1996, FosterGrant began selling "premium" eyewear. In relation to FosterGrant's other optical products, "premium" means prices starting at $15 to $25.
16. In early 1997, FosterGrant sought to expand its offerings of premium optical products. FosterGrant's long-range plan for its premium eyewear was to introduce four new lines of premium sunglasses over a period of three to four years. Specifically, FosterGrant envisioned (1) a "casual outdoors" line, (2) an "athletic/sports" line, (3) a "fashion" line, and (4) a "classic/polarized" line.
17. FosterGrant's decision to design and develop a "casual outdoors" line was based on the popularization of the "rugged, durable but comfortable" look by companies such as Eddie Bauer, Patagonia and Timberland and the general fashion of styles associated with outdoors activities.
18. Popular culture now includes "expedition fashion" or an "expedition look." That fashion or look includes clothing or accessories that might traditionally be worn by one on an actual expedition. The fashion business includes both clothing and accessories, including watches, jewelry, handbags, sunglasses, and shoes.
19. The "expedition look" incorporates colors (e.g., tans, beiges, browns, greens, khaki) and materials (e.g., leathers, rubber) that reflect the general fashion trend towards casual wear for outdoor activities. The "expedition look" may be created by "expedition hats," "expedition shirts," "expedition vests," "expedition belts," "expedition shorts," and "expedition pants."
20. The "expedition look" was in existence when Timex first developed its TIMEX EXPEDITION line of watches. Timex considered and selected materials for use in its TIMEX EXPEDITION watches to evoke an outdoors, rugged, durable look. Timex's promotional materials for its TIMEX EXPEDITION line of watches draw on these connotations.
21. When FosterGrant turned its attention to developing the 2000 model year line of sunglasses, a meeting of the management team proposed a redesigned premium "casual outdoors" line to follow FOSTERGRANT IRONMAN, another popular line of FosterGrant sunglasses. The basic concept was similar to FOSTERGRANT WILDERNESS CREEK (another line of FosterGrant sunglasses) although the drawings transformed what had been a popularly-priced product to a premium product. The new line was intended to evince the "expedition look."
22. The management considered a list of 10-15 possible names for the new line. Among the names on the list was FOSTERGRANT EXPEDITION. The Director of Product Development and Merchandising for FosterGrant had seen a Ford Expedition sport utility vehicle on his way to work one day in 1997 and thought the name captured the outdoors, rugged, tough and durable concept he had in mind. The name was first discussed prior to March, 1998.
23. FosterGrant's management team discussed a number of names in the hope of selecting two, one for mass merchandising and one to be used as a private label. The management team eventually agreed on the name FOSTERGRANT EXPEDITION.
24. When it decided upon FOSTERGRANT EXPEDITION, FosterGrant's management team was aware that Timex sold a line of wristwatches known as TIMEX EXPEDITION and, of course, that Ford sold the Ford Expedition.
25. A trademark screening search of "Expedition" ordered by FosterGrant on April 22, 1998, revealed that the term "expedition" was widely registered by unrelated parties.
26. A full U.S. and Canadian Trademark Research Report was ordered by FosterGrant on April 24, 1998, for the mark EXPEDITION, for "sunglasses, eyewear and related accessories." The results of this second search were consistent with the first, namely that many unrelated entities owned registrations of marks containing the term "expedition." Many of the coexisting, unrelated registrations utilizing the term "expedition" were issued by the U.S. Patent and Trademark Office for similar goods.
27. The second search also revealed a trademark registration of LEE EXPEDITIONS, LTD., for "sunglasses, eyeglass clips, protective eye shields and sports eyeglasses," and that an application was pending to register NIGHT EXPEDITION for night vision devices, namely "glasses, goggles, scopes, binoculars, and monoculars." There are thirty-six U.S. Trademark Registrations for marks containing the term "expedition," and all of those marks predate Timex's application for eyeglasses, sunglasses and binoculars. In addition, several of those companies sell apparel and/or fashion accessory items under product names or descriptions that incorporate the term "expedition."
28. The uses within the category of "expedition gear," include clothing, backpacks, luggage, underwater gear, and other equipment used by mountain climbers, trekkers, explorers, and others engaged in expeditions.
29. In light of the widespread third-party registration of the name "Expedition" in related product areas and the fact that the word "expedition" is descriptive of a fashion look and certain product characteristics (i.e., outdoors, rugged, tough, durable), FosterGrant decided to go forward with FOSTERGRANT EXPEDITION for sunglasses. Similarly, Timex chose TIMEX EXPEDITION for watches to capture certain product characteristics of the "expedition look."
30. FosterGrant proceeded to adopt the name FOSTERGRANT EXPEDITION on the reasonable belief that Expedition was a weak, diluted mark and that no party could reasonably claim to possess the exclusive right to use the word "expedition" for any fashion-related products. Moreover, in light of the fame and strong association of the FosterGrant name with optical products, FosterGrant did not anticipate any conflict or confusion arising out of FosterGrant's use of FOSTERGRANT EXPEDITION on sunglasses, especially considering Timex's use of its TIMEX mark in connection with the TIMEX EXPEDITION line of merchandise.
31. By making prominent use of the famous FosterGrant house mark along with the EXPEDITION name, FosterGrant aimed to distinguish its sunglasses from the numerous other EXPEDITION products.
D. Timex's Efforts with Respect to Licensing and Registering EXPEDITION
32. In June, 1998, William Potts, Vice-President of Marketing for FosterGrant, mentioned the FOSTERGRANT EXPEDITION concept to Mario Sabatini, Timex's Director of Sports Watch Business. Potts explained that FosterGrant was thinking about a FOSTERGRANT EXPEDITION line of sunglasses and inquired whether Timex might be interested in promoting its TIMEX EXPEDITION watch with FOSTERGRANT EXPEDITION sunglasses.
33. Sabatini did not, however, express any particular interest or enthusiasm about coordinating efforts to sell TIMEX EXPEDITION wristwatches and FOSTERGRANT EXPEDITION sunglasses. Moreover, Sabatini did not indicate that Timex was developing a TIMEX EXPEDITION line of sunglasses or that it was in the process of registering the EXPEDITION trademark in connection with sunglasses.
34. Sabatini reported the Potts conversation to Timex's legal counsel, who in turn spoke with the Timex licensing department.
35. On June 24, 1998, Potts met with Sabatini and Helen Prial, Timex's Vice President of Licensing. During this meeting, Potts informed Prial that FosterGrant was working on a line of FOSTERGRANT EXPEDITION sunglasses.
36. A few days later, Potts received from Prial a letter, dated June 26, 1998. In the letter, Prial indicated that the TIMEX EXPEDITION line of watches had been so successful that Timex had decided to embark on developing a TIMEX EXPEDITION line of sunglasses. Prial also stated that Timex had filed applications to register EXPEDITION in the U.S. Patent and Trademark Office for use on glasses and sunglasses. She even enclosed a licensing kit in the event that FosterGrant might decide to license TIMEX EXPEDITION from Timex.
37. Timex had, in fact, applied to register EXPEDITION as to eyeglasses, sunglasses and binoculars on June 25, 1998 — the day before Prial offered to license the name to FosterGrant and less than a month after Potts disclosed FosterGrant's intention to market FOSTERGRANT EXPEDITION sunglasses to Sabatini.
38. In late July, 1998, Potts followed up on Prial's June 26th letter and told her that FosterGrant was not interested in licensing the TIMEX EXPEDITION name.
39. In August or September, 1998, Potts spoke with Prial on the telephone about the TIMEX EXPEDITION graphics. Potts also offered to pay 2% of FosterGrant's revenues from the sale of FOSTERGRANT EXPEDITION sunglasses as a license fee, rather than the customary 8-10% license fee for a brand name, because FosterGrant sought only to use Timex's graphics. Prial rejected this offer and stated that Timex was only interested in licensing the mark TIMEX EXPEDITION. FosterGrant never proposed licensing EXPEDITION alone from Timex.
40. On September 2, 1998, FosterGrant filed an application with the U.S. Trademark Office to register FOSTERGRANT EXPEDITION in connection with sunglasses. The examining officer rejected the application, in part, on the basis of the existing trademark registration by Timex for EXPEDITION.
E. Timex Licenses TIMEX EXPEDITION to MZ Berger Retroactively
41. In April or May, 1999, Timex began investigating granting a license to MZ Berger, a timepiece company, to produce a line of sunglasses. MZ Berger had first proposed to license only the TIMEX mark for eyewear in June, 1998. Timex did not discuss the possibility of licensing both TIMEX and EXPEDITION to MZ Berger until nearly six months after FosterGrant first informed Timex of its plans to sell FOSTERGRANT EXPEDITION sunglasses.
42. On July 1, 1999, MZ Berger obtained a license to use TIMEX EXPEDITION with sunglasses. This license was retroactive to January 1, 1999. Under the license MZ Berger is required to use both TIMEX and EXPEDITION on the sunglasses.
F. Timex's Knowledge of the Strength (or Weakness) of "Expedition"
43. In April, 1999, Potts learned that Timex had filed an "intent to use" application to register the name EXPEDITION for eyeglasses, sunglasses, and binoculars with the U.S. Patent and Trademark Office on June 25, 1998.
44. Also in April, 1999, Robert Comstock, LLC, objected to Timex's use of "Expedition" on clothing. On May 13, 1999, Timex responded to Comstock and asserted that Timex's investigation revealed that over a dozen companies held trademark registrations that included the term "Expedition" for various articles of clothing. Timex maintained that it could use "Expedition" either alone or in combination with other names or designs, in connection with clothing. The basis for these assertions was the dozens of registrations for trademarks including the term "expedition" for various articles of clothing.
Comstock Load, Inc. registered the trademark "Expedition" in 1988 for use in connection with men's apparel and assigned it to Robert Comstock, LLC, a clothing manufacturer. In April, 1999, Robert Comstock, LLC, apparently learned that Timex intended to use the Expedition mark in the apparel field and notified Timex that it opposed such use.
45. Timex believed that a TIMEX clothing line that used the mark EXPEDITION could coexist in the marketplace with clothing sold under the mark EXPEDITION by Robert Comstock, LLC.
G. Timex Uses the Mark TIMEX EXPEDITION, Not EXPEDITION Alone
46. From the very beginning of the line, Timex used the mark TIMEX EXPEDITION on watches, not EXPEDITION alone. Timex usually refers to the brand as TIMEX EXPEDITION in its internal memoranda.
47. Timex has taken active steps to create a brand identity for TIMEX EXPEDITION. Timex contracted with a marketing firm to create an image for the TIMEX EXPEDITION brand. Timex has also made attempts to license the mark TIMEX EXPEDITION on apparel as it is a common practice in the fashion accessories field to increase the marketing impact of recognized trademarks by licensing their use on related products.
48. Documents related to both its watch and sunglass lines refer to TIMEX EXPEDITION, not EXPEDITION. Most of Timex's advertisements and promotional materials for the TIMEX EXPEDITION watches prominently feature the famous TIMEX brand. In addition, the words "TIMEX EXPEDITION" appear on the face of the TIMEX EXPEDITION watches.
49. The brand is TIMEX EXPEDITION, not EXPEDITION alone.
50. Timex's promotional materials for its eyewear, including sunglasses, emphasize the authority brand or house mark, TIMEX. B MZ Berger also markets and refers to the sunglass line as TIMEX EXPEDITION.
H. FosterGrant and Timex's Co-Existing Uses of "Expedition"
51. The term "expecition" is widely used by third parties and, as discussed supra, is descriptive of certain product characteristics.
52. TIMEX and FOSTERGRANT are both well-known, "authority" brands. An authority brand or housemark is a brand which indicates the source of a particular product. With TIMEX EXPEDITION watches, the source of the product is identified by TIMEX, the authority brand. With FOSTERGRANT EXPEDITION sunglasses, the authority brand FOSTERGRANT identifies the source of the product as FosterGrant.
53. The famous authority brands TIMEX and FOSTERGRANT are sufficiently different such that confusion among prospective purchasers is improbable.
54. The authority brand FOSTERGRANT is prominently displayed on the hang tags of the FOSTERGRANT EXPEDITION sunglasses. The name FosterGrant appears five (5) times on the hang tags, a space which is approximately 3-4" x 1 1/2". FosterGrant intends to emphasize the FosterGrant name in its marketing efforts for FOSTERGRANT EXPEDITION sunglasses to further develop its powerful brand name.
55. There is some overlap in the parties' goods and channels of trade.
56. FosterGrant and Timex both produce quality products.
57. Consumers are likely to recognize FosterGrant — not Timex — as the source of FOSTERGRANT EXPEDITION sunglasses.
58. Both TIMEX and FOSTERGRANT are very strong house brands, among the strongest in the nation.
Conclusions of Law
A. The Preliminary Injunction Standard
"In order to obtain a preliminary injunction, a party must demonstrate: 1) that it is subject to irreparable harm; and 2) either a) that it will likely succeed on the merits or b) that there are sufficiently serious questions going to the merits of the case to make them a fair ground for litigation, and that a balancing of hardships tips `decidedly' in favor of the moving party." Genessee Brewing Company, Inc. v. Stroh Brewing Company, 124 F.3d 137, 142 (2d Cir. 1997). See also Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 998-999 (2d Cir. 1997); L. J.G. Stickley, Inc. v. Canal Dover Furniture Co., Inc., 79 F.3d 258, 261-262 (2d Cir. 1996); Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967 (2d Cir. 1996).
As indicated above, where the movant fails to prove that it is likely to succeed on the merits of its case, the Court may, nonetheless, grant the requested injunctive relief if it determines that "the plaintiff has raised questions going to the merits so serious, substantial, difficult and doubtful, as to make them fair ground for litigation and thus for more deliberate investigation." Thornock v. Kinderhill Corp., 702 F. Supp. 468, 471 (S.D.N.Y. 1988) (citing Hamilton Watch Co. v. Benrus Watch Co., 206 F.2d 738, 740 (2d Cir. 1953)); see also Phillip v. The National Collegiate Athletic Assoc., 960 F. Supp. 552, 554 (D. Conn. 1997); Gennaro v. Rosenfield, 600 F. Supp. 485, 492 (S.D.N.Y. 1984) (citing Buffalo Forge Co. v. Ampco-Pittsburgh Corp., 638 F.2d 568, 569 (2d Cir. 1981)); Jacobson Co., Inc. v. Armstrong Cork Co., 548 F.2d 438, 442-443 (2d Cir. 1977); Omega Importing Corp. v. Petri-Kine Camera Co., Inc., 451 F.2d 1190, 1193-1194 (2d Cir. 1971) (quoting Buffalo Forge,supra). This is a less rigorous, more lenient, relaxed standard of review. See Sweeney v. Bane, 996 F.2d 1384, 1388 (2d Cir. 1993) (quotingPlaza Health Labs., Inc. v. Perales, 878 F.2d 577, 580 (2d Cir. 1989);See also Prairie Band of Potawatomi Indians v. Pierce, 64 F. Supp.2d 113, 1115 (D. Kan. 1999); Beerheide v. Zavaras, 997 F. Supp. 1405, 1410 (D. Cob. 1998).
If the Court proceeds under this alternative preliminary injunction merits analysis, there is an additional requirement which also must be satisfied: "the movant must show that the harm which he would suffer from the denial of his motion is `decidedly' greater than the harm his opponent would suffer if the motion was granted." Buffalo Forge, 638 F.2d at 569 (quoting Buffalo Courier-Express, Inc. v. Buffalo Evening News, Inc., 601 F.2d 48, 58 (2d Cir. 1979)); see also Phillip, 960 F. Supp. at 554 (citing Clemente Global Growth Fund, Inc. v. Pickens, 705 F. Supp. 958, 970 (S.D.N.Y. 1989)); Thornock, 706 F. Supp. at 471 (citation omitted);Gennaro, 600 F. Supp. at 492. This has been referred to as "the balance of hardships." See Buffalo Forge, 638 F.2d at 569; Phillip, 960 F. Supp. at 554; Gennaro, 600 F. Supp. at 492. When the Court proceeds under this alternative preliminary injunction merits analysis, it must first inquire into whether the balance of hardships tips decidedly in favor of the movant. See Phillip, 960 F. Supp. at 554 (citing Buffalo Forge, 638 F.2d at 569). "Unless the balance of hardships tips decidedly in favor of the movant, the court need not decide whether there are serious questions presenting a fair ground for litigation." Buffalo Forge, 638 F.2d at 569.
Regardless which preliminary injunction analysis the Court proceeds under, it is mindful that the Second Circuit has cautioned that preliminary injunctive relief is an "extraordinary and drastic remedy which should not be routinely granted." Buffalo Forge, 638 F.2d at 569 (quoting Medical Society of New York v. Toia, 560 F.2d 535, 538 (2d Cir. 1977)).
As discussed, infra at section C, the Court is not persuaded that the plaintiff is likely to succeed on the merits of its case. Accordingly, the Court considers its motion for a preliminary injunction under the second, more lenient standard. B. Trademark Infringement in Violation of 15 U.S.C. § 1114 and 1125 (a)(1)
The discussion that follows identifies several questions raised by the evidence before the Court concerning the merits of this case. Because the Court is proceeding under the second, more lenient, preliminary injunction standard discussed supra at pages 12-13 and infra at page 25-26, it is not required to identify or resolve these questions at this time. See Buffalo Forge, 638 F.2d at 569. Nonetheless, the Court has identified these questions at this time because their existence supports the Court's conclusion that the plaintiff has failed to demonstrate that it is likely to succeed on the merits of its case and that proceeding under the alternate preliminary injunction standard is warranted here. of course, as indicated supra at pages 12-13 and infra at pages 26-28, the existence of these questions does not dispose of the plaintiffs motion. The Court must also consider the balance of hardships, as it has doneinfra at pages 26-28.
1. General Principles
"The Lanham Act prohibits the use in commerce, without consent, of any `registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods,' in a way that is likely to cause confusion." Time, Inc. v. Petersen Publishing Co., 173 F.3d 113, 117 (2d Cir. 1999) (quoting 15 U.S.C. § 1114 (1)(a)). The Act also prohibits the infringement of unregistered, common law trademarks. See Time, Inc., 173 F.3d at 117 (quoting 15 U.S.C. § 1125 (a)(1)).
Proceeding under either provision, the plaintiffs burden is the same: it must prove that "`it has a valid mark entitled to protection and that the defendant's use of it is likely to cause confusion.'" Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 390 (2d Cir. 1995) (quoting Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993)); See also Time, Inc., 173 F.3d at 117. Marks that are inherently distinctive are, of course, entitled to trademark protection. See Time, Inc., 173 F.3d at 117. If a mark is "merely descriptive," it is entitled to federal trademark protection only if it has acquired secondary meaning, that is, only if "has become distinctive of the . . . goods in commerce." See Time, Inc., 173 F.3d at 117 (quoting 15 U.S.C. § 1052 (f)); see also Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1509 (2d Cir. 1997). "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.'" Arrow, 59 F.3d at 390 (quoting Pirone v. MacMillan, Inc., 894 F.2d 579, 583 (2d Cir. 1990)). See also Time, Inc., 173 F.3d at 117 see also Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d at 1509. It may also occur through registration of the trademark. Gruner + Jahr, 991 F.2d at 1076.
To succeed on an infringement claim, the possessor of a valid mark "must prove 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." Time, Inc., 173 F.3d at 117 (quoting Gruner + Jahr, 991 F.2d at 1077).
2. The Polaroid Factors and Their Application in the Instant Case
In the Second Circuit, district courts apply what has become known as "the Polaroid factors" when deciding whether a possessor of a valid mark has established that the use of a similar mark is likely to cause confusion. Time, Inc., 173 F.3d at 117. The Polaroid factors are:
"The Polaroid factors" are derived from Judge Friendly's opinion inPolaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).
(1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) the defendant's good faith in adopting its mark; (7) the quality of the defendant's product; and (8) the sophistication of the buyers.See Time, Inc., 173 F.3d at 117, Estee Lauder, Inc., 108 F.3d at 1510;Hormel Foods Corporation v. Jim Henson Productions, Inc., 73 F.3d 497, 502-505 (2d Cir. 1996); Arrow, 59 F.3d at 391; Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). A discussion of each of these factors and their application to the findings of fact here follows.
i. Strength of the Mark
The strength of a mark is its power to identify the source of a product. See Time, Inc., 173 F.3d at 117 (citing Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d Cir. 1998)). In determining the strength of a mark, the Court must consider its inherent distinctiveness, descriptiveness, and secondary meaning. Time, Inc., 173 F.3d at 117. Upon considering these characteristics, the Court must place the mark into one of four categories along a spectrum of possible trademarks: generic, descriptive, suggestive, and arbitrary or fanciful.Time, Inc., 173 F.3d at 118 (citing Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly, J.)). Classification of a mark into one of these four categories determines its validity and is also relevant in determining the strength of the mark. Time, Inc., 173 F.3d at 118.
It has been recognized that the required analysis is "somewhat circular" given that consideration of the "strength" factor requires an evaluation of "the same characteristics that initially determined a mark's validity." Time, Inc., 173 F.3d at 117.
"A generic mark (e.g., `Magazine' as a magazine title) receives no trademark protection." Time, Inc., 173 F.3d at 118 (citing Abercrombie Fitch Co., 537 F.2d at 9).
Arbitrary or fanciful marks are the strongest marks and are entitled to the fullest protection against infringement. Time, Inc., 173 F.3d at 118 (citing Abercrombie Fitch Co., 537 F.2d at 9).
Suggestive marks, those that require "imagination, thought and perception to reach a conclusion as to the nature of goods," occupy the category of next strongest marks. Id.
A merely descriptive mark — one that describes the qualities or characteristics of a product is an even weaker mark and is only entitled to protection if it has acquired a secondary meaning. See Park'N Fly, 469 U.S. at 194; see also Time, Inc., 173 F.3d at 118; Estee Lauder, Inc., 108 F.3d at 1509.
"With regard to all valid marks, the stronger the secondary meaning, the stronger the mark for the purpose of the first Polaroid factor." Time, Inc., 173 F.3d at 118.
In addition to the inherent distinctiveness of a mark, a mark's distinctiveness in the marketplace also must be considered in determining its strength. Time, Inc., 173 F.3d at 118 (citing Streetwise, 159 F.3d at 743-744). In this regard, third party use of part or all of the mark weakens the overall strength of the mark. See Time, Inc., 173 F.3d at 118 (citing Streetwise, 159 F.3d at 743-744).
Registration of the mark under the Lanham Act is also relevant to determining the mark's strength. See Time, Inc., 173 F.3d at 118 (citingGruner + Jahr, 991 F.2d at 1077). Registration for a period of five years allows a merely descriptive mark to become incontestable on the basis of lack of secondary meaning; that is, precluding the claim that the mark is merely descriptive. See 15 U.S.C. § 1065, 1115(b); see also Park'N Fly, 469 U.S. at 193; Time, Inc., 173 F.3d at 118. "However, while incontestability relates to a trademark's strength, it does not alter the breadth of infringement protection that a mark is accorded. As a general matter, registration creates no substantive trademark rights against infringement beyond the common law rights acquired through use of the mark." Time, Inc., 173 F.3d at 118 (citing La Societe Anonyme des Parfums LeGalion v. Jean Patou, Inc., 495 F.2d 1265, 1270 n. 5 (2d Cir. 1974) andClairol, Inc. v. Gillette Co., 389 F.2d 264, 267 (2d Cir. 1968)). In fact, a finding of incontestability "`does not guarantee that the mark is a strong one.'" Conopco Inc. v. Cosmair, Inc., 49 F. Supp.2d 242, 250 (S.D.N.Y. 1999) (quoting Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 744 (2d Cir. 1998)); see also W.W.W. Pharmaceutical Co. Inc. v. The Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993). In addition, regardless whether one possesses a registered or unregistered trademark, the test for infringement is the same: the likelihood of consumer confusion as to the source of the allegedly infringing product. See Time, Inc., 173 F.3d at 118; see also American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 664 (2d Cir. 1979).
Here, on the one hand, TIMEX EXPEDITION is a popular brand of wristwatches, but the evidence also shows that the term "Expedition" is used in connection with a variety of products produced by other companies, including automobiles, clothing, and optical wear, suggesting EXPEDITION alone is a weak mark.
This is underscored by the fashion trend known as the "expedition look," which weakens Timex's registered EXPEDITION mark. Additionally, Timex regularly uses the mark TIMEX EXPEDITION, not merely EXPEDITION. All of these considerations are relevant to an assessment of the overall strength of the mark.
Timex asserts that the EXPEDITION mark for watches is incontestable on the basis of descriptiveness because it has been registered for five years. See Plaintiffs Update Proposed Findings of Fact at page 2, ¶ 7 and Plaintiffs Post-Hearing Memorandum in Support of Motion for a Preliminary Injunction at page 3, at *. In making this claim, Timex relies upon a 1988 trademark registration for EXPEDITIONS (plural) for watches. See Plaintiffs Exhibit 31, ¶ 2 (Partridge Aff) and Plaintiffs Exhibit 36. Timex, however, now seeks trademark protection of EXPEDITION (singular) for sunglasses and the incontestable status of the EXPEDITIONS (plural) trademark for watches does not extend to the mark at issue in this case. This is because a trademark can only become incontestable as to the products identified in the registration. See Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 669 (5th Cir. 2000) (although trademark was incontestable when used in connection with the product it was registered for, that incontestability did not carry over to use of the mark on new products bearing the mark which owner began to market); CBS, Inc. v. Liederman, 886 F. Supp. 763, 765 (S.D.N.Y. 1994) (fact that trademark is incontestable for a particular product does not bar use in connection with a different product); Moore Business Forms, Inc. v. Rite Aid Corp., No. CIV-90-121lE, 1991 WL 275499, at * 8, fn 2 (W.D.N.Y. Dec. 6, 1991) (incontestability status only extends as far as the product identified in the registration). Aside from the impact of product differences on the claimed incontestability, the Court also notes that the mark which Timex claims is incontestable is EXPEDITION (singular), however, the mark which was registered nearly ten years ago is EXPEDITIONS (plural). Timex has offered no authority in support of its contention that the incontestability of EXPEDITIONS (plural) is extended to EXPEDITION (singular). Assuming arguendo that EXPEDITION is an incontestable mark for sunglasses, it would not, by itself, entitle the plaintiff to a preliminary injunction. The Court would still be required to consider each of the Polaroid factors, see Gruner + Jahr, 991 F.2d at 1077 (identifying mark as incontestable, yet examining it in light of the Polaroid factors); see also Time, Inc., 173 F.3d at 117-118 (same analysis), and upon consideration of those factors, it would reach the same decision in this case.
ii. Similarity of the Two Marks
In considering this Polaroid factor, the Court must determine "'the general impression conveyed to the purchasing public by the respective marks.'" Conopco, Inc. v. Cosmair, Inc., 49 F. Supp.2d 242, 250 (S.D.N.Y. 1999) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1226 (2d Cir. 1987)). This requires the Court to examine "the entire look of the product or packaging"Conopco Inc., 49 F. Supp. 2d at 250 (citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., 973 F.2d 1033, 1045-1046 (2d Cir. 1992)), including the "`products sizes, logos, typefaces, and package designs.'" Conopco, Inc., 49 F. Supp. 2d at 250 (quoting W.W.W. Pharmaceutical Co. Inc. v. The Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993)). See also Gruner + Jahr, 991 F.2d at 1078.
"Finally, `the presence and prominence of markings tending to dispel confusion as to the origin, sponsorship or approval of the goods in question is highly relevant'" to the Court's inquiry on this Polaroid factor. Conopco, Inc., 49 F. Supp. 2d at 250 (quoting Bristol-Myers Squibb Co., 973 F.2d at 1045-1046. The prominent display of a housemark together with an allegedly infringing trademark favors a finding of dissimilarity between the two marks and "significantly reduces, if not altogether eliminates, any likelihood of consumer confusion." Nabisco, Inc. v. Warner-Lambert Company, No. 99-7191, ___ F.3d ___, 2000 WL 790926, at *3 (2d Cir. June 5, 2000) (marks ICE BREAKERS and DENTYNE ICE were sufficiently dissimilar by virtue of the presence of the housemark DENTYNE; thus, the two marks were not likely to cause confusion); see also Estee Lauder, Inc., 108 F.3d at 1511 (presence of housemarks for ESTEE LAUDER and OLD NAVY made two trade dresses dissimilar); Gruner + Jahr, 991 F.2d at 1078 (presence of housemark "Ladies Home Journal" made two marks sufficiently dissimilar); W.W.W. Pharmaceutical Co., 984 F.2d at 573 (RIGHT GUARD SPORT STICK not confusingly similar to SPORT STICK as matter of law; "when a similar mark is used in conjunction with a company name, the likelihood of confusion may be lessened"); Bristol-Myers Squibb Co., 973 F.2d at 1045-46 (overturning factual finding of confusing similarity between packages for EXCEDRIN PM and TYLENOL PM; "the prominence of the trade names on the two packages weighs heavily against a finding of consumer confusion"); Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 831 (8th Cir. 1999) (MICHELINA'S LEAN'N TASTY not confusingly similar to STOUFFER'S LEAN CUISINE as a matter of law; "[t]he use of different colors and typefaces, as well as the prominent display of the house marks convey perceptible distinctions between the products"); Universal Money Ctrs., Inc. v. American Tel. Tel. Co., 22 F.3d 1527, 1531 (10th Cir. 1994) (ATT UNIVERSAL CARD not confusingly similar to UNIVERSAL MONEY marks due, in part, to ATT's prominent use of distinctive house mark); Conopco, Inc., 49 F. Supp. 2d at 250 (presence of housemark RALPH LAUREN on an allegedly infringing product made two marks dissimilar and not likely to cause confusion).
In the instant case, the presence of the housemarks or authority brands TIMEX and FOSTERGRANT on the packaging, advertisements, and products favors a finding that the two marks are sufficiently dissimilar. Indeed, as the Second Circuit recently held in Nabisco, Inc., the presence of these housemarks "significantly reduces, if not altogether eliminates, any likelihood of consumer confusion." Id. 2000 WL 790926, at *3 An examination of the typefaces, logos, package designs, and the inclusion of the housemarks or authority brands also shows that the two marks are dissimilar.
iii. The Proximity of the Products
Inquiry into this element of the Polaroid test requires the Court to focus upon "`whether the two products compete with each other.'" Bear U.S.A., Inc. v. A.J. Sheepskin Leather Outwear, Inc., 909 F. Supp. 896, 906 (S.D.N Y 1995) (quoting Lang v. Retirement Living Publishing Co., 949 F.2d 576, 582 (2d Cir. 1991)); see also Conopco, Inc., 49 F. Supp. 2d at 251. If the two products "`serve the same purpose' or `fall within the same general class,' the use of similar marks is more likely to cause confusion." Bear U.S.A., Inc., 909 F. Supp. at 906 (quoting Lang, 949 F.2d at 582).
The Timex products and the FosterGrant products are marketed through many of the same stores and types of stores. Thus, a finding in favor of Timex on this prong of the Polaroid test is warranted.
iv. Likelihood of Bridging the Gap
This element requires the Court to determine whether the alleged infringer intends to offer a product similar to that offered by the plaintiff, and use the alleged infringing mark. See Gruner + Jahr, 991 F.2d at 1078; Conopco, Inc., 49 F. Supp. 2d at 252; Bear U.S.A., Inc., 909 F. Supp. at 906.
It is apparent that Timex and FosterGrant offer similar products, sunglasses, and that both are using "Expedition" in connection with their marks. Accordingly, Timex has "bridged the gap."
v. Actual Confusion
Although evidence of actual confusion is a strong indication that likelihood of confusion exists, a possessor of a mark need not show actual confusion in order to prove that the likelihood of it exists. See Conopco, Inc., 49 F. Supp. 2d at 251 (citations omitted); Bear U.S.A., Inc., 909 F. Supp. at 906.
The plaintiff has failed to sufficiently demonstrate the existence of actual consumer confusion concerning the two products in question.
vi. Defendant's Bad Faith
The assessment of this Polaroid factor requires the Court to determine whether the alleged infringer acted in bad faith in adopting the use of the allegedly infringing mark. See Bear U.S.A., Inc., 909 F. Supp. at 906. Such an assessment requires the Court to examine the sequence of events leading up to the defendant's use of the mark id and whether the alleged infringer knew of the plaintiffs mark. Centaur Comm., 830 F.2d at 1228.
After examining the sequence of events leading up to FosterGrant adopting use of the mark, the Court is not persuaded that it acted in bad faith. However, this should not be construed as a finding that FosterGrant did not act in bad faith. On the current record, the timing of certain relevant events, including communications and meetings between key personnel from Timex and FosterGrant, it is unclear whether FosterGrant acted in bad faith in adopting use of the mark.
vii. Quality of the Defendant's Product
"'This factor is primarily concerned with whether the senior user's reputation could be jeopardized by virtue of the fact that the junior user's product is of inferior quality.'" Conopco, Inc., 49 F. Supp. 2d at 255 (quoting Arrow Fastener, 59 F.3d at 398).
It is apparent that Timex and FosterGrant both offer good quality merchandise and that no significant difference has been demonstrated concerning the quality of the two lines of sunglasses.
viii. Sophistication of the Relevant Consumer Groups
This Polaroid factor requires the Court to consider the consumers of the products, whether they will be able to appreciate the differences between the two marks, and thus not become confused between the two. See Bear U.S.A., Inc., 909 F. Supp. at 906. "The Court" must consider [t]he general impression of the ordinary purchaser, buying under the normally prevalent condition of the market and giving the attention such purchasers usually give in buying that class of goods. Conopco, Inc., 49 F. Supp. 2d at 255 (quoting W.W.W. Pharmaceutical, 984 F.2d at 575).
With respect to this final Polaroid factor, the Court concludes that there is insufficient evidence to determine the level of sophistication possessed by the purchasers of the Timex and FosterGrant products.
C. Summary of Findings
The Court concludes that the plaintiff has not proven that it is likely to succeed on the merits of its trademark infringement claim against the defendant. However, the plaintiff has demonstrated that there are sufficiently serious questions going to the merits of the case to make them a fair ground for litigation. Although not required to do so under this second standard, see Buffalo Forge, 638 F.2d at 569 ("Unless the balance of hardships tips decidedly in favor of the movant, the court need no decide whether there are serious questions presenting fair ground for litigation"), the Court has concluded that — with respect to a number of the Polaroid factors-there exist questions so serious, substantial, difficult and doubtful, as to make them fair ground for litigation.
In addition, because the plaintiff has not demonstrated it has failed to demonstrate that there is a likelihood of confusion as to the source of the goods in question, it is not entitled to the presumption of irreparable harm that ordinarily flows therefrom in an infringement action. See Tough Traveler, Ltd., 60 F.3d at 967-968 (showing likelihood of success on the merits in an infringement action, entitles plaintiff to a presumption of irreparable harm); Genesee Brewing Company, Inc., 124 F.3d at 142 (same).
In reaching this conclusion, the Court is also mindful that no particular Polaroid factor is dispositive on the issue of likelihood of confusion and that it should not apply the factors mechanically. See Nabisco, Inc., 2000 WL 790926, at * 3; See also, Estee Lauder, Inc., 108 F.3d at 1510. Rather, the Court should weigh the factors to "ascertain whether there is a likelihood of confusion on the part of an appreciable segment of the purchasing public as to the source of the product." Gruner + Jahr, 991 F.2d 1079-1080. After weighing the overall impact of the Polaroid factors, the Court concludes at this time on the record before it that an appreciable segment of the purchasing public is not likely to be confused as to the source of the FOSTERGRANT EXPEDITION sunglasses. Timex, however, has raised serious questions on this issue.
In reaching this conclusion, the Court has considered the fact that the trademark examiner at the U.S. Patent and Trademark Office rejected FosterGrant's application to register FOSTERGRANT EXPEDITION. Although this fact is entitled to great weight in rendering a decision on the pending motion, it is not dispositive. See Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 437 F.2d at 567 (quoting W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970). However, relevant considerations in evaluating the weight to assign that preliminary decision include the fact that the Court has reached its conclusion based on a more complete evidentiary record than was before the trademark examiner, having heard from both parties, and upon consideration of the Polaroid factors. See e.g., Prime Media, Inc. v. Primedia, Inc., 33 F. Supp.2d 932, 938 (D.Kan. 1998) (probative value of trademark examiners rejection of trademark application is somewhat limited where party filing application did not have the opportunity to respond);Packerware Corp. v. Corning Consumer Products Co., 895 F. Supp. 1438, 1449 (D. Kan. 1995) (in assessing weight to be given the trademark examiners initial decision to reject an application fact that the decision was made in the absence of the evidence before the district court was relevant); ACCU Personnel, Inc. v. ACCUSTAFF, Inc., 823 F. Supp. 1161, 1164-1165 (D. Del. 1993) (record before trademark examiner left basis for his decision unclear, thus, it was entitle to less weight).
In light of these serious questions, the issuance of a preliminary injunction in this case is dependent upon a determination by the Court of whether the balance of hardships tip decidedly in favor of Timex.
D. The Balance of Hardships
Timex's position is not similar to those in which courts have concluded that the balance of hardships tipped decidedly in favor of the plaintiff to warrant the issuance of an injunction where there were questions so serious, substantial, difficult and doubtful as to make them fair ground for litigation and thus for more deliberate investigation. For example, in Semmes Motors, Inc. v. Ford Motor Co., 492 F.2d 1197, 1204-1207 (2d Cir. 1970), the Second Circuit concluded that the balance of hardships so tipped in favor of the plaintiff where it had demonstrated that, in the absence of a preliminary injunction, the plaintiff would have been forced out of business as a Ford distributor.
The Second Circuit reached the same conclusion in Hamilton Watch Co. v. Benrus Watch Co., 206 F.2d 738, 740 (2d Cir. 1953), where the denial of a temporary injunction would have brought the plaintiff under the control of another company. See also Roso-Lino Beverage Distributors, Inc. v. Coca-Cola Bottling Co. of New York, 749 F.2d 124, 126 (2d Cir. 1984) (plaintiffs loss of business in the absence of a preliminary injunction tipped the balance of hardships in its favor); Columbia Broadcasting System, Inc. v. American Society of Composers, Authors and Publishers, 320 F. Supp. 389, 292 (S.D.N.Y. 1970) (defendant's substantial loss of revenue, inability to enter into agreements with other companies, and the relative size of it compared to plaintiff, all relevant considerations in concluding that balance of hardships tipped in favor of granting the defendant a preliminary injunction).
Finally, in Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190, 1194 (2d Cir. 1971), the Second Circuit held that the balance of hardships tipped decidedly in favor of the plaintiff, although not as dramatically as in Hamilton or Semmes. In Omega two camera manufacturers were distributing cameras under the same name, at almost identical prices. The identical nature of the two marks, the nearly identical pricing of the two products, and the fact that plaintiff had a substantial business in distributing the cameras, combined to tip the balance of hardships in favor of the plaintiff
The instant case presents a situation unlike those in Hamilton, Semmes, Omega, Roso-Lino, and American Society. Timex is not in imminent danger of losing the ability to market the TIMEX EXPEDITION line of merchandise, nor is it in danger of being acquired by FosterGrant. Nor has it been shown that permitting FosterGrant to market FOSTERGRANT Expedition sunglasses would affect the marketing of TIMEX EXPEDITION watches. Additionally, FosterGrant is not offering sunglasses using a name identical to that of Timex. Further, the evidence suggests that Timex derives the vast majority of its revenues from the sale of watches and there is insufficient evidence to conclude permitting FosterGrant to continue selling FOSTERGRANT EXPEDITION sunglasses would cause the financial viability of Timex to suffer in any meaningful way, or force Timex out of business. Cf. Jack Kahn Music Co., Inc. v. Baldwin Piano Organ Co., 604 F.2d 755, 759, 764 (2d Cir. 1979) (plaintiff-dealer's loss of ability to carry defendant's line of pianos which was but one line of numerous makes and models sold by plaintiff insufficient to tip balance of hardships in favor of granting plaintiffs motion for a preliminary injunction); Augusta News Co. v. News America Publishing, Inc., 750 F. Supp. 28, 34 (D. Me. 1990) (loss of 10% of business in the absence of an injunction did not tip the balance in favor of the plaintiff).
FosterGrant, on the other hand, is predominantly an eyewear manufacturer. Enjoining it from marketing one of its principal product lines — FOSTERGRANT EXPEDITION sunglasses-when there are substantial questions concerning whether they are violating the federal trademark laws would place an undue hardship on its business as a whole. Indeed, to date, FosterGrant has ordered and shipped to retailers tens of thousands of units of FOSTERGRANT EXPEDITION sunglasses and intends to ship approximately 520,000 additional units to retailers by December, 2000. The sale of FOSTERGRANT EXPEDITION sunglasses would represent 8-13% of FosterGrant's projected $75 million in gross sunglass sales. Additionally, removing FOSTERGRANT EXPEDITION sunglasses and display cases from the market would cost a significant amount of money and result in significant lost profits. Replacing the product tags would cost FosterGrant hundreds of thousands of dollars and changing the displays would cost approximately $300,000 to $500,000. Under such circumstances, the Court does not conclude that Timex will suffer more harm if the motion for a preliminary injunction is denied, than that which FosterGrant may suffer if the motion is granted. See, e.g., Jacobson Co., Inc., 548 F.2d at 443.
Accordingly, the Court concludes that the balance of hardships tip in favor of FosterGrant, not Timex.
Conclusion
For the foregoing reasons, the Court concludes that the plaintiff is not entitled to preliminary injunctive relief Accordingly, the plaintiffs motion for a preliminary injunction [ doc. #4] is DENIED.
In addition, within twenty-one (21) days of the date of this order, the parties are required to comply with their obligations under Fed.R.Civ.P. 26(f) and D. Conn. Loc. R. Civ. P. 38.