DECISION AND ORDER

RICHARD BERMAN, District Judge

I. Introduction

On or about September 14, 2004, Cartier and Cartier International, B.V. (together, "Cartier" or "Plaintiffs") filed an amended complaint ("Amended Complaint") against Sardell Jewelry, Inc. and Eli Sardar (together, "Defendants") asserting trade dress and trademark infringement in violation of Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and Section 349 of the New York General Business Law, N.Y. Gen. B.L. § 349. (Amended Complaint ¶¶ 60, 61, 69, 70.) Plaintiffs allege that Defendants "without Cartier's authorization, have advertised, offered for sale, sold and distributed imitations of Cartier's watches and jewelry, . . . infringing the rights of Cartier." (Id. ¶ 53.)

On or about May 6, 2005, Plaintiffs filed a motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, arguing that Defendants "copied one of its famous and successful watch designs — the Tank Francaise — and sold 'knockoff' or 'look-alike' watches." (See Plaintiffs' Memorandum of Law in Support of Motion for Summary Judgment, dated May 6, 2005 ("Plaintiffs' Memorandum"), at 1.) On or about June 9, 2005, Defendants opposed the motion and cross-moved for summary judgment, arguing that "the most prominent features of the Cartier watch are functional," and that the evidence is "inadequate to show that the design of the Cartier watch is . . . distinctive." (See Defendants' Memorandum of Law in Opposition to Plaintiffs' Motion for Summary Judgment and in Support of Defendants' Cross Motion for Summary Judgment, dated June 8, 2005 ("Defendants' Opposition"), at 2-3.) On or about June 24, 2005, Plaintiffs filed their reply. (See Plaintiffs' Reply Memorandum of Law in Further Support of Motion for Summary Judgment, dated June 24, 2005 ("Plaintiffs' Reply").) For the reasons stated below, Plaintiffs' motion for summary judgment is granted in part and denied in part, and Defendants' motion for summary judgment is granted in part and denied in part.

II. Background

Plaintiffs have been a "world famous watch manufacturer and jeweler" since 1847, and manufacture and distribute the Tank Francaise family of luxury watches ("Tank Francaise"). (Plaintiffs' Memorandum at 1-2.) Plaintiffs own Trademark Registration No. 2,322,769 for the Tank Francaise case design, issued on February 29, 2000. (Amended Complaint ¶ 29.) Defendant Sardell Jewelery, Inc. is a New York corporation which "generally sells at wholesale to jewelry stores, although it has on occasion sold to retail customers." (Plaintiffs' Memorandum at 4; Plaintiffs' Statement of Material Facts Pursuant to Local Civil Rule 56.1, dated May 6, 2005 ("Plaintiffs' 56.1 Stmt.") ¶ 3.) Defendant Eli Sardar is president of Sardell Jewelry, Inc. and "is responsible for and makes the final decision as to buying." (Plaintiffs' 56.1 Stmt. ¶ 4.) On or about February 13, 2004, Defendants sold a watch ("Defendants' Watch") to an investigator hired by Plaintiffs for $1,000. (Id. ¶¶ 5-7.)

Plaintiffs claim that Defendants' Watch is "a close imitation" of the trade dress for the Tank Francaise. (Id. ¶ 9; Defendants' Statement of Material Facts Pursuant to Local Rule 56.1, dated June 2, 2005 ("Defendants' 56.1 Stmt.") ¶ a.) Defendants argue that, other than producing a "square watch with Roman numerals on the dial", "the remaining features of Plaintiff's 'Tank Francaise" watch . . . are not copied or imitated by the watch sold by the defendants." (Defendants' 56.1 Stmt. ¶¶ A, F.)

Both watches are alike in that they each have (1) square watch faces that feature Roman numerals, each of which "inclines to conform to the angle-direction of the watch hands at such time as the hands are juxtaposed to that numeral," (Plaintiffs' 56.1 Stmt. ¶ 10(c)), (2) a "metal chain bracelet . . . [which] consists of alternating H-shaped and rectangular links," (id. ¶ 10(f)), (3) "relatively thick concave vertical frames (or brancards), both formed of the case metal. . . . [which] are elongated beyond the bottom and top of the watch case, and end in inwardly angled corners," (id. ¶ 10(a)), and (4) "chapter ring[s] or minute guide[s] located between the center of the dial and the numerals." (Id. ¶ 10(a); (see also photograph of Defendants' Watch, attached as Exhibit B to Declaration of Hanice Tavares, dated May 2005 ("Tavares Decl.")); photograph of the Tank Francaise, attached as Ex. FF to Declaration of Milton Springut, dated May 6, 2005 ("Springut Decl.").) Certain models of the Tank Francaise include a square window showing the date in place of the Roman numeral "six," and this is also true of Defendants' Watch. The face of Defendants' Watch is marked "GENEVE" on the upper portion and "QUARTZ" on the bottom portion, while the Tank Francaise reads "CARTIER" on the upper portion of the watch face and the bottom portion is blank. (See Tavares Decl. Ex. B; Springut Decl. Ex. FF.)

III. Legal Standard

Federal Rule of Civil Procedure 56(c) provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material issue of fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "The court must view the evidence in the light most favorable to the party against whom summary judgment is sought and must draw all reasonable inferences in [its] favor." Koch v. Multiplan, Inc., No. 99 Civ. 11277, 2001 U.S. Dist. LEXIS 2142, at *6 (S.D.N.Y. Feb. 16, 2001); Melwani v. Jain, No. 02 Civ. 1124, 2004 U.S. Dist. LEXIS 7590, at *12 (S.D.N.Y. Apr. 29, 2004). The Court must reserve any genuine issue of material fact for a jury. See ResQNet.com, Inc. v. Lansa, Inc., 382 F. Supp. 2d 424, 436 (S.D.N.Y. 2005).

When cross-motions for summary judgment are made, the standard is the same as that for individual motions. See Morales v. Quintel Entm't, Inc., 249 F.3d 115, 121 (2d Cir. 2001); AFP Imaging Corp. v. Philips Medezin Systeme Unternehmensbereich der Philips GMBH, No. 92 Civ. 6211, 1994 U.S. Dist LEXIS 16504, *2 (S.D.N.Y. Nov. 17, 1994). The court must consider each motion independently of the other. Morales, 249 F.3d at 121.

IV. Analysis

Section 43(a) of the Lanham Act prohibits a person from using "any word, term, name symbol or device, or any combination thereof" that is "likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods." 15 U.S.C. § 1125(a). Section 32 of the Lanham Act requires that the mark in question has been registered. 15 U.S.C. § 1114(1). In order to prevail in an action for trade dress and trademark infringement pursuant to Sections 32 and 43(a) of the Lanham Act, plaintiff must show "(1) that the mark is distinctive as to the source of the good, and (2) that there is a likelihood of confusion between its good and defendant's." Yurman Design, Inc. v. Paj, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001). Even if plaintiff can show distinctiveness and a likelihood of confusion, "a defendant may avoid liability under [the Lanham Act] if he or she is able to demonstrate that the allegedly similar trade dress feature is 'functional.'" Villeroy Boch Keramische Werke K.G. v. THC Sys., Inc., 999 F.2d 619, 620 (2d Cir. 1993). "A product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995).

(1) Distinctiveness of the Tank Francaise Mark

Plaintiffs argue that "Cartier has achieved secondary meaning in the Tank Francaise design at issue" because, among other things, "a consumer survey . . . shows 60% recognition among the relevant consuming public," (i.e., fine watch owners or those very likely to buy), and there has been "extensive media commentary and recognition." (Plaintiffs' Memorandum at 14-15.) Defendants respond that "even if plaintiff's product were well recognized by the public," no secondary meaning exists because Plaintiffs cannot show that "from observing the product, the observer knows that it is the product of a particular manufacturer." (Defendants' Opposition at 4.) Defendants also contend that the consumer survey on which Plaintiffs rely "is flawed and would likely be inadmissible at trial because it did not test the perceptions of an ordinary observer." (Id. at 10.)

"Distinctiveness may be proven by showing the intrinsic nature of the mark serves to identify a particular source or that 'in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.'" Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217, 240 (S.D.N.Y. 2004) (citing Yurman, 262 F.3d at 115.) Courts consider "advertising expenditures, consumer studies, sales, competitors' attempts to plagiarize the mark, and the length and exclusivity of the mark's use" in determining whether a mark has acquired a secondary meaning. Friesland Brands, B.V. v. Vietnam Nat'l Milk Co., 228 F. Supp. 2d 399, 405 (S.D.N.Y. 1983) (quoting Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 393 (2d Cir. 1995)).

Advertising Expenditures

Plaintiffs provide substantial evidence that "Cartier has engaged in extensive advertising and other promotion of its products, including the Tank Francaise" by, among other things, "plac[ing] print advertising in magazines, newspapers, and billboards, both nationally and regionally, as well as 'co-op' advertising with its authorized dealers." (Plaintiffs' Memorandum at 4; see Springut Decl. Exs. AA-DD, FF.) Plaintiffs show that "media spending for the Tank Francaise has averaged in excess of $1 Million per year," and that advertisements have appeared in national publications such as Vogue, Town and Country, Architectural Digest, The New Yorker, The New York Times, Washington Post, Los Angeles Times, and The Chicago Tribune. (Id.; see Springut Decl. Ex. X.) These extensive efforts to advertise and promote Plaintiffs' products weigh in favor of a finding that the Tank Francaise has acquired a secondary meaning.See Four Star, 348 F. Supp. 2d at 241-42; Citigroup v. Citi Holding Co., 171 F. Supp. 2d 333, 346 (plaintiff's marks, "through extensive advertising and promotion over the decades, garnered extraordinary acquired distinctiveness.") Consumer Studies

Plaintiffs retained an expert, Dr. Sidney Lirtzman, president of Fairfield Consulting Associates, Inc. (a consumer consulting company), to conduct a survey to assess whether the Tank Francaise has acquired a secondary meaning. (See Declaration and Expert report of Dr. Sidney I. Lirtzman, dated March 8, 2005 ("Lirtzman Expert Report").) Dr. Lirtzman interviewed 149 customers at Tourneau watch stores in Manhattan, Long Island, and Los Angeles who "reported owning a fine watch valued at $2,500 or more" or "were very likely to buy a fine watch in the next year." (Lirtzman Expert Report at 8.) The survey found that "sixty-one percent of the respondents associated the design of the Tank Francaise watch with a single company." (Id.) Defendants argue that the Lirtzman Expert Report is "flawed" because it "did not test the perceptions of an ordinary observer." (Defendants' Opposition at 10.) Plaintiffs respond that "it is sufficient to demonstrate secondary meaning in the limited market for such watches." (Plaintiffs' Reply at 2.)

The Lirtzman Expert Report shows that a majority of consumers who "reported owning a fine watch valued at $2,500 or more" or "were very likely to buy a fine watch in the next year" identify the Tank Francaise with one source. "The Plaintiff is not required to establish that all consumers relate the product to its producer; it need only show that a substantial segment of the relevant consumer group makes this connection." Coach Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) (emphasis in original); Four Star, 348 F. Supp. 2d at 242 ("[V]alid market research does not require a secondary meaning survey to be conducted in a vacuum."). Because the findings in the Lirtzman Expert Report show that the Tank Francaise has acquired secondary meaning among fine watch owners or those likely to purchase a fine watch in the next year, it supports a ruling in Plaintiffs' favor. See Deere Co. v. MTD Holdings Inc., No. 00 Civ. 5936, 2004 U.S. Dist. LEXIS 2550, at **32-33 (Feb. 19, 2004); Schering Corp. v. Pfizer, Inc., No. 98 Civ. 7000, 2000 U.S. Dist. LEXIS 7071, at **24-25 (May 24, 2000). Sales

Plaintiffs present evidence that Cartier watches are sold in the United States in 33 Cartier boutiques and by approximately 225 authorized dealers. (Plaintiffs' Memorandum at 5; Springut Decl. Exs. Z, AA.) As of 2002, Cartier had sold approximately 93,750 Tank Francaise watches for more than $266 million. (Plaintiffs' Memorandum at 5; Springut Decl. Ex. Y.) This evidence of sales success also favors a finding that the Tank Francaise has achieved secondary meaning. See Four Star, 348 F. Supp. 2d at 242; see also Deere Co., 2004 U.S. Dist. LEXIS at *33.

Competitors' Attempts to Plagiarize the Mark

Plaintiffs present evidence that "numerous merchants of 'knockoff' or 'look-alike' merchandise make comparison . . . to Cartier through use of such terms as 'Cartier-style' or even the specific Cartier models, e.g., 'Tank Francaise.'" (Plaintiffs' Memorandum at 9; Springut Decl. Exs. LL, NN-PP.) "Secondary meaning may be supported by intentional copying, particularly when the purpose is 'to benefit from the good will of the prior user through confusion.'" Four Star, 348 F. Supp. 2d at 243 (citing New Colt Holding Corp. v. RJG Holdings of Fla., Inc., 312 F. Supp. 2d 195, 208-09 (D. Conn. 2004)). The intentional copying identified by Plaintiffs is evidence that the Tank Francaise has acquired a secondary meaning. See Centaur Commc'ns Ltd. v. A/S/M Commc'ns, Inc., 830 F.2d 1217, 1224 (2d Cir. 1987); N.Y. State Soc'y of CPAs v. Eric Louis Assocs., 79 F. Supp. 2d 331, 340 (S.D.N.Y. 1999).

Length and Exclusivity of Use

The Tank Francaise was first marketed in 1996 and was an "instant hit," and the design has been used continuously for over nine years. (Plaintiffs' Memorandum at 5.) This length of time supports a finding that the Tank Francaise has acquired secondary meaning. See Four Star, 348 F. Supp. 2d at 243 (evidence of secondary meaning exists where product design had been used for eight years); Dana Braun, Inc. v. SML Sport Ltd., 2003 U.S. Dist. LEXIS 21349, **39-40 (S.D.N.Y. 2003) (evidence of secondary meaning exists where product design had been used for five years); Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 367 (S.D.N.Y. 2000) (evidence of secondary meaning exists where product design had been used for eleven years).

Plaintiffs also provide substantial evidence that Cartier has protected the Tank Francaise mark. Plaintiffs "enforce a 'zero tolerance' policy with respect to infringements," and, among other things, employ an investigator dedicated to discovering possible infringements in Manhattan, send many "'cease and desist' letters, which consist of alerting alleged infringers of Cartier's rights and various claims of infringement," and "[o]ccasionally, these efforts also include filing of litigation." (Plaintiffs' Memorandum at 11.) These measures also support a finding that the Tank Francaise has acquired a secondary meaning. See Dana Braun, 2003 U.S. Dist. LEXIS at **39-40.

Examining these factors in their totality, the Court concludes that the Tank Francaise is distinctive and has acquired a secondary meaning. See Four Star, 348 F. Supp. 2d at 244;see also, Centaur Commc'ns, 830 F.2d at 1222; Deere Co, 2004 U.S. Dist. LEXIS at **33-34; Energy Brands, Inc. v. Beverage Mktg. USA, Inc., No. 02 Civ. 3227, 2002 U.S. Dist. LEXIS 7763, at *3 (S.D.N.Y. May 1, 2002).

(2) Likelihood of Confusion

Plaintiffs argue that Defendants' Watch caused "confusion as to sponsorship, initial interest (pre-sale) confusion and post-sale confusion." (Plaintiffs' Memorandum at 18.) Defendants respond that no such confusion existed because "potential purchasers of fine watches costing thousands of dollars are highly sophisticated and will not be fooled into believing that the source of a watch is other than Cartier simply because its design is similar." (Defendants' Opposition at 10.)

Courts consider the following factors in determining whether a likelihood of confusion exists: "(1) the strength of plaintiffs' mark; (2) the degree of similarity between plaintiffs' and defendant's marks; (3) the proximity of the products; (4) the likelihood that either owner will bridge the gap, using the mark on products closer to the other's area of commerce; (5) the sophistication of the buyers and the quality of defendants' product; (6) actual confusion; and (7) good or bad faith." Four Star, 348 F. Supp. 2d at 244 (citing Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)); see also TCPIP Holding Co. Inc. v. Haar Commc'n, Inc., 244 F.3d 88, 100 (2d Cir. 2001). No one factor is determinative and a court "should focus on the ultimate question of whether consumers are likely to be confused." Tactica Int'l v. Atl. Horizon Int'l, 154 F. Supp. 2d 586, 602 (S.D.N.Y. 2001);see also Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 199 (2d Cir. 2001).

(1) Strength of Plaintiffs' Mark

A plaintiff's mark is strong when it has a "tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source." 1-800-Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d 467, 495 (S.D.N.Y. 2003). The Tank Francaise mark is strong and has acquired a secondary meaning. See supra pp. 4-7. "The same type of evidence may support a claim concerning the strength of a mark and a claim concerning secondary meaning." PAJ, Inc. v. Barron's Gold Mfg. Corp., No. 02 Civ. 1465, 2002 U.S. Dist. LEXIS 14227, at *6 (S.D.N.Y. Aug. 2, 2002).

(2) Similarity of the Marks

"The comparison of marks is an inquiry designed to determine the general impression conveyed to the purchasing public by the respective marks." Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 77 (2d Cir. 1988) (citation omitted). Courts "must appraise the overall impression created by . . . the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers." Friesland Brands, 228 F. Supp. 2d at 405.

The Court has carefully examined Defendants' Watch and the Tank Francaise "side by side." Both watches have (same sized) square watch faces that feature Roman numerals, each of which "inclines to conform to the angle-direction of the watch hands at such time as the hands are juxtaposed to that numeral," a "metal chain bracelet . . . [which] consists of alternating H-shaped and rectangular links," "relatively thick concave vertical frames (or brancards), both formed of the case metal. . . . [which] are elongated beyond the bottom and top of the watch case, and end in inwardly angled corners," and "chapter ring[s] or minute guide[s] located between the center of the dial and the numerals." (Plaintiffs' 56.1 Stmt. ¶ 10; see also Tavares Decl. Ex. B; Springut Decl. Ex. FF.) Certain models of the Tank Francaise include a square window showing the date in place of the Roman numeral "six," and this is also true of Defendants' Watch. (See id.) Defendants' Watch is yellow gold colored (either 14 karat gold or gold-plated), and the Tank Francaise is also manufactured in yellow gold. (See id.) The face of Defendants' Watch is marked "GENEVE" on the upper portion and "QUARTZ" on the bottom portion, while the Tank Francaise reads "CARTIER" on the upper portion of the watch face and the bottom portion is blank. (See id.) Defendants' Watch appears to be of inferior quality to the Tank Francaise; it did not feel heavy and the case and bracelet were scratched. (See Defendants' Watch, submitted with Letter from Plaintiffs to the Court, dated October 6, 2005.)

Because Defendants' Watch so closely resembles the Tank Francaise, there is a likelihood of confusion. See Four Star, 348 F. Supp. 2d at 245 ("watches will often be viewed in isolation in display cases, in catalogs and on wearer's wrists. In these multifarious contexts, the court finds that even consumers who are familiar with Cartier's designs would be unlikely to notice small but nonetheless significant differences between . . . [a Cartier watch] and a copy.") (3) Proximity of the Products

This factor "addresses whether, due to the commercial proximity of the competitive products, consumers may be confused as to their source." Hasbro, 858 F.2d at 77. "Both Cartier's and defendants' products are what might be termed luxury watches . . . The products are similar and are designed for the same purpose. The proximity of the watches is therefore sufficiently close to create a likelihood of confusion." Four Star, 348 F. Supp. 2d at 246; (see Tavares Decl. Ex. C.)

(4) Likelihood of 'Bridging the Gap'

"'Bridging the gap' refers to the probability of defendants entering plaintiffs' business or of the average customer's perception that defendants would enter plaintiffs' market." Four Star, 348 F. Supp. 2d at 246 (citing Malletier v. Dooney Bourke, Inc., 340 F. Supp. 2d 415, 432 (S.D.N.Y. 2004)). Where, as here, the goods compete in the same market (i.e., the luxury watch market), "there is no gap to be bridged," and so this factor is inapplicable. Four Star, 348 F. Supp. 2d at 246;see Friesland Brands, 228 F. Supp. 2d at 407.

(5) Sophistication of Buyers and Quality of Defendants' Product

"Generally, the more sophisticated and careful the average consumer of a product is, the less likely it is that similarities in trade dress or trade marks will result in a conclusion concerning the source or sponsorship of the product." Bristol Myers Squibb, Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d Cir. 1992). In certain contexts, the sophistication of the buyer "might not be determinative," Tough Travelers v. Outbound Prods., 989 F. Supp. 203, 216-17 (N.D.N.Y. 1997), because "it is sophisticated . . . buyers who pay the most attention" to certain aspects of a luxury product. Lois Sportswear U.S.A., Inc. v. Levi Strauss Co., 799 F.2d 867, 875 (2d Cir. 1986) (explaining that sophisticated jeans purchasers were more likely to be confused by jeans with similar stitching on the back pockets).

Plaintiffs argue that, although the purchasers of luxury watches are sophisticated, "actionable confusion includes not only traditional point-of-sale confusion, but also other forms of confusion, including post-sale, initial interest, and sponsorship confusion, for all of which the supposed sophistication of the customer is less important." (Plaintiffs' Reply at 4.) Defendants respond that sophisticated purchasers "will not be fooled into believing that the source of a watch is other than Cartier simply because its design is similar." (Defendants' Opposition at 10.)

Actionable confusion can occur in several contexts, including where "(1) prospective purchasers believe that the senior user sponsored or otherwise approved of the junior user's trademark; (2) potential consumers initially are attracted to the junior user's mark by virtue of its similarity to the senior user's mark, even though consumers are not actually confused at the time of purchase; and (3) customers are confused as to the source of the junior user's product when this product is observed in the post-sale context." Jordache Enters., Inc. v. Levi Strauss Co., 841 F. Supp. 506, 514-15 (S.D.N.Y. 1993) (citations omitted).

There is no evidence "tending to show that initial or post-sale confusion exists because of, rather than in spite of, the sophistication of the luxury watch consumer," or that consumers assume that a relationship exists between Plaintiffs and Defendants. Four Star, 348 F. Supp. at 247; see also Tough Travelers, 989 F. Supp. at 216-17 ("in absence of some evidence that a relationship between the parties exists, to assume that consumers are likely to suppose the existence of such a relationship is overly speculative").

Courts must also consider "whether the senior user's reputation could be jeopardized by virtue of the fact that the junior user's product is of inferior quality." Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 965 (2d Cir. 1996); see also Star Indus. v. Bacardi Co., 412 F.3d 373, 389 (2d Cir. 2005). An inferior product may cause injury to a superior product because "people may think that the senior and junior products came from the same source . . . or products of equal quality may tend to create confusion as to source because of this very similarity." 1-800-Contacts, 309 F. Supp. 2d at 502 (citing Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497, 505 (2d Cir. 1996)). As noted, there is evidence that Defendants' Watch is of inferior quality to the Tank Francaise. (See Declaration and Expert Report of Leon Adams, dated March 10, 2005 at 4 ("I am surprised at the extremely poor quality of the watch given the large price tag [$1,000]. Most of the metal appears to be gold plated, not 14 karat gold (as stamped on the back of the watch case), and the plating is beginning to wear off in places."). "Where the allegedly infringing product is inferior, the quality factor weighs in favor of Plaintiff."Calvin Klein Jeanswear Co. v. Tunnel Trading, No. 98 Civ. 5408, 2001 U.S. Dist. LEXIS, at *31 (S.D.N.Y. Nov. 16, 2001); see Forschner Group v. Arrow Trading Co., 124 F.3d 402, 405 (2d Cir. 1997); Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 1004 (2d Cir. 1996); Cartier v. Aaron Faber, Inc., No. 05 Civ. 6615, 2005 U.S. Dist. LEXIS 22251, at **11-12 (S.D.N.Y. Sept. 30, 2005).

(6) Actual Confusion

"The Lanham Act does not require evidence of actual confusion as a prerequisite to recovery." Four Star, 348 F. Supp. 2d at 247. Plaintiffs do not present any specific evidence of actual confusion. (See Plaintiffs' Memorandum at 22.)

(7) Good or Bad Faith

The question is whether Defendants "adopted the marks with the intention of capitalizing on Cartier's reputation and goodwill, as well as any customer confusion as to the source of the products." Four Star, 348 F. Supp. 2d at 248; see also Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 482-83 (2d Cir. 1996). Defendants' Watch appears similar to the Tank Francaise, and Defendants, as jewelry sellers, must (should) have "had knowledge of plaintiffs' design and did not innocently choose a confusingly similar design." Four Star, 348 F. Supp. 2d at 248. In Four Star, defendant told plaintiff's private investigator that "defendants' watches were exactly the same as Cartier watches . . . [and] compared defendants' watches to advertisements of plaintiffs' watches and pointed out similar features." Id. The court held that "[t]he foregoing all suggests a showing of bad faith." Id. In the instant case, Defendants promoted their watch as an "exact copy" of the Tank Francaise. (See Tavares Decl. ¶ 4 (Defendants' salesman told Plaintiffs' investigator that "these are exactly like Cartiers."); see also Tavares Decl. Ex. A); Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 745 (2d Cir. 1998); We Media v. Ge, 218 F. Supp. 2d 463, 478 (S.D.N.Y. 2002) (bad faith occurs where second-comer "intentionally copies a trademark or trade dress").

Taken together, these factors establish that there is a likelihood that consumers would confuse Defendants' Watch with the Tank Francaise. See Four Star, 348 F. Supp. 2d at 249;see also Virgin Enters. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003); Fun-Damental Too, 111 F.3d at 1005.

Non-Functionality

Defendants argue that "the most prominent features of the Cartier watch are functional and for that reason cannot be included in the collocation of features which could arguably make the Cartier watch distinctive" — namely, "the roman numerals and the artful way in which they are placed" and "both watches appear to be square." (Defendants' Opposition at 2.) Plaintiffs respond that Defendants have improperly "select[ed] two out of the many trade dress elements claimed by Cartier, labeling them the 'most prominent' and then attacking them individually as 'functional.'" (Plaintiffs' Reply at 2-3.)

"[A] product is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Yurman, 262 F.3d at 116. Where aesthetic features are in question, "the dress is functional if the right to use it exclusively 'would put competitors at a significant non-reputation-related disadvantage.'" Four Star, 348 F. Supp. 2d at 249 (citing Fruit-Ices Corp. v. Coolbrands, Int'l Inc., 335 F. Supp. 2d 412 (S.D.N.Y. 2004)).

The trade dress of the Tank Francaise is not functional. See Four Star 348 F. Supp. 2d at 225 ("the watch designs at issue are purely ornamental and do not play a functional, essential, or cost-saving role in the manufacture of the watches."). It is improper to "break [Plaintiffs'] trade dress into its individual elements and then attack certain of those elements as functional" because Plaintiffs "claim as [their] mark the particular combination and arrangement of design elements that identify its [watches] and distinguish them from other [watches]." Le Sportsac, Inc. v. K Mart Corp., 654 F.2d 71, 76 (2d Cir. 1985). And, "the fact that a design feature performs a function does not make it essential to the performance of that function; . . . the true test of functionality is not whether the feature in question performs a function, but whether the feature is dictated by the functions to be performed." Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987) (internal citation omitted). None of the distinctive features of the Tank Francaise are essential to the function of the watch, nor do they render the Tank Francaise cheaper or easier to manufacture. See Four Star, 348 F. Supp. 2d at 225;Stormy Clime, Ltd. v. Progroup, Inc., 809 F.2d 971, 975 (2d Cir. 1987) (a design feature is functional if it "affect[s] the cost or quality of an article . . . [or] which permits the article to be manufactured at a lower cost.") (citations omitted).

Because the Tank Francaise has acquired a secondary meaning, there is a likelihood of confusion between the Tank Francaise and Defendants' Watch. Moreover, the Tank Francaise's trade dress is not functional. Plaintiffs succeed on their Lanham Act trade dress and trademark infringement claims. See Four Star, 348 F. Supp. 2d at 249; Centaur Commc'ns, 830 F.2d at 1229.

Defendant Eli Sardar

Defendants admit that "Eli Sardar is responsible for and makes the final decision as to buying." (Plaintiffs' 56.1 Stmt. ¶ 5; Defendants' 56.1 Stmt. ¶ (a)); see Carrel v. Shubert Org., Inc., 104 F. Supp. 2d 236, 271 (S.D.N.Y. 2000). A showing that an officer "authorized and approved the acts of unfair competition which are the basis of [the] . . . corporation's liability . . . is sufficient participation in the wrongful acts to make [the officer] individually liable." Bambu Sales, Inc. v. Sultana Crackers, Inc., 683 F. Supp. 899, 913-14 (E.D.N.Y. 1988) (citingDonsco v. Casper, Inc., 587 F.2d 602, 606 (3d Cir. 1978).

Section 349 of New York General Business Law

Plaintiffs argue that "claims for trade dress infringement under the laws of the State of New York are similar to those under the Lanham Act," and should be "considered together." (Plaintiffs' Memorandum at 13.) Although Defendants do not respond, "most . . . trade dress infringement claims are deemed to fall outside the ambit of Section 349." Perkins Sch. for the Blind v. Maxi-Aids, Inc., 274 F. Supp. 2d 319, 327 (E.D.N.Y. 2003).

To prevail on a Section 349 claim, Plaintiffs must provide proof of "consumer injury or harm to the public interest" or evidence of "potential danger to the public health or safety."Gucci Am., Inc. v. Duty Free Apparel, Ltd., 277 F. Supp. 2d 269, 273 (S.D.N.Y. 2003). "Mere evidence of general consumer confusion is insufficient." Starbucks Corp. v. Wolfe's Borough Coffee, Inc., No. 01 Civ. 5981, 2004 U.S. Dist. LEXIS 19239, at **29-30 (S.D.N.Y. 2004). Plaintiffs fail to provide sufficient evidence of consumer injury or harm to the public interest. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., No. 01 Civ. 5981, 2004 U.S. Dist. LEXIS 19239, at *30 (S.D.N.Y. Sept. 28, 2004) ("Harm to a business from a competitor, however, does not constitute the kind of detriment to the public interest required by the statutes."); digiGAN, Inc. v. iValidate, Inc., No. 02 Civ. 420, 2004 U.S. Dist. LEXIS 1324, *20 (S.D.N.Y. Feb. 3, 2004) (finding that Section 349 had not been violated where "there are no factual allegations . . . that suggest a broad impact on consumers."). Trade dress infringement claims "are not cognizable under [this] statute unless there is a specific and substantial injury to the public interest over and above ordinary trademark infringement or dilution." Nat'l Distillers Prods Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474, 486-87 (S.D.N.Y. 2002).

V. Conclusion and Order

For the reasons stated herein, Plaintiffs' motion for summary judgment is granted in part and denied in part and Defendants' motion for summary judgment is granted in part and denied in part.

The parties are requested to appear at a settlement/status conference with the Court on October 28, 2005 at 9:45 a.m., in Courtroom 706 of the Thurgood Marshall Courthouse, 40 Centre Street, New York, New York. The parties are directed to engage in good faith settlement negotiations prior to the conference.