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finding that "Sarah Arizona" mark lacked strength in the marketplace where numerous other marks used on similar clothing incorporated the name "Sarah" or "Sara"
Summary of this case from Joules Ltd. v. Macy's Merch. Grp. Inc.Opinion
03 CIV. 6405(BSJ)
November 24, 2003
Opinion
Plaintiff Dana Braun, Inc. ("Sarah Arizona"), the owner of the mark SARAH ARIZONA, moves for a preliminary injunction restraining defendant SML Sport Ltd. ("SML") from using the trade name SARAH McKENZIE in connection with its sale of printed skirts and coordinated sweaters, and from promoting its mark and its goods in a confusingly similar manner.
Specifically, Plaintiff seeks to preliminarily enjoin SML (1) "from using the mark SARAH McKENZIE, or any other mark incorporating the words `SARAH', `SARA', or `ARIZONA', or [words] otherwise confusingly similar to the mark SARAH ARIZONA, in connection with the advertising, promotion, distribution or sale of printed or reversible-printed skirts and color-coordinated sweaters;" and (2) "from depicting on its promotional materials a combination of all or nearly all of the following elements: (a) a model wearing a printed or reversible-printed skirt and seed-stitch sweater or similar fabric; (b) a two-part woman's name for the clothing line, of which the first is "Sarah"; (c) the display of the name of the clothing line in a font typified by an "R" that does not fully connect with the straight vertical portion of the letter, leaving a small space between the loop and the vertical line; and (d) the display of the name of the clothing line, usually across the middle of the page, but at times below or above the model." (Plaintiff's Proposed Findings of Fact ("Pl's Facts") at 2).
Sarah Arizona and SML submitted declarations in support of and in opposition to the motion. In addition, the Court held a hearing on plaintiff's motion on September 3-4, 2003.
The parties submitted post-hearing Proposed Findings of Fact and Conclusions of Law, as well as new information concerning the issue of the clothing line labels as required by the Court. Plaintiff also submitted with its post-hearing papers, without leave of the Court, declarations and materials containing new evidence on various topics. Defendant objects to these submissions on the grounds that it did not have the opportunity to cross-examine the declarants or otherwise rebut the new information. The Court agrees with the Defendant and therefore will not consider this new information contained in Plaintiff's post-hearing submissions.
After analyzing the evidence using the relevant factors as set forth inPolaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (1961), the Court determines that Plaintiff has not demonstrated a likelihood of success on the merits regarding consumer confusion between Plaintiff's and Defendant's trademark. However, the Court finds that there is a likelihood of success regarding Defendant's infringement of Plaintiff's trade dress, and resultant irreparable harm. Accordingly, the Court preliminarily enjoins SML from distributing postcards and other advertising materials that directly infringe Sarah Arizona's trade dress as specifically described below, but does not grant any of the other relief sought by Plaintiff.
FINDINGS OF FACT
The following shall constitute the Court's findings of fact and conclusions of law required by Rule 52(a) of the Federal Rules of Civil Procedure.
1. Sarah Arizona
Dana Braun, Inc. is a New York corporation that designs, manufactures, markets, distributes and sells women's apparel under the trade name "Sarah Arizona/' and under a private label. Dana Braun is currently the President and principal designer of Sarah Arizona.
The Sarah Arizona line includes reversible, printed skirts, and matching color-coordinated, seed-stitch sweaters, all of which are made with high-quality fabrics such as one hundred percent rayon georgette for its skirts and one hundred percent rayon seed-stitch for its sweaters. The clothing is sold primarily at upscale, national department stores, including Nordstrom, and at smaller specialty stores throughout the United States and Canada. Nordstrom is amongst Sarah Arizona's biggest customers.
Sarah Arizona began offering reversible skirts in its Spring 1998 catalogue, which was disseminated in 1997. Although Plaintiff believes that it was the first to invent or market on a large scale the reversible skirt, it does not assert any ownership rights, including copyright, in the reversible skirt.
Sarah Arizona's skirts are sold to retailers for approximately $44-$58, and are, in turn, sold by stores to consumers for approximately $88-$119. It's color coordinated sweaters are sold to retailers for approximately $32-$46, and are sold to consumers by the stores for approximately $64-$92.
Plaintiff's gross sales under the SARAH ARIZONA mark reached almost $14,000,000 in 2002; in the last eight years, Sarah Arizona has sold approximately $100,000,000 worth of women's clothing. Printed and reversible georgette skirts and coordinated sweaters presently constitute approximately eighty-percent of Sarah Arizona's sales.
This figure represents plaintiff's total sales from 1996 until the present, but does not provide the sales figures attributable only to printed or reversible-printed skirts and color-coordinated sweaters.
a. The Sarah Arizona Trademark
Plaintiff has sold its goods under the SARAH ARIZONA mark continuously since 1979. In March 1999, Plaintiff applied to register a mark consisting of the words "Sarah Arizona" on the Principal Register of the United States. The application was granted and issued on June 13, 2000, for use on or in connection with "women's clothing, namely dresses, skirts, sweaters, blouses, pants, shorts and belts."
Plaintiff's trademark application included a "typed drawing" of the SARAH ARIZONA mark in capital letters, which was not limited to any particular form, font or style. (See 37 C.F.R. § 2.51(e)). Over time, Plaintiff has used the mark in various fonts and typestyles.
Since spring 2000, Plaintiff has displayed the SARAH ARIZONA mark on the cover of its catalogues and on some of its promotional materials in a simple font, featuring all capital letters in block style, without serifs, and with an unusual "R." Specifically, the loop of the curved part of the R is "open," in that it does not touch the straight vertical portion of the letter.
The "R" resembles: R.
Importantly, this open-R font appears only on Plaintiff's catalogue covers and not on its clothing labels, which instead feature the Sarah Arizona mark in block, all-capital letters. The record does not indicate that consumers associate any particular font with plaintiff or its mark.
b. Sarah Arizona's Catalogue
Plaintiff began publishing catalogues in 1989. The catalogue is published two to three times each year, and distributed to approximately 10,000 regional divisional-managers, buyers and others at department and specialty stores in the United States and Canada. The Sarah Arizona catalogue is not sent directly to consumers. During the years 1994-2002, Sarah Arizona spent approximately, $1,295,779 to produce and distribute the various editions of the Sarah Arizona catalogue.
Since spring 2000, the cover of the Sarah Arizona catalogue has featured a full-length color photograph of a model standing and wearing a printed or reversible-printed, georgette skirt and rayon seed-stitch sweater or similar fabric. The model is centered on a plain background, which is color-coordinated with the colors of the skirt and sweater the model is wearing. The SARAH ARIZONA mark is usually printed horizontally across the middle of the page, but is sometimes below or above the model. The mark is printed in all-capitals, with the open-R font described above.
Notably, however, Plaintiff has no copyright in, or trademark registration of, its catalog cover. In addition, Plaintiff produced no evidence or studies showing that consumers, as opposed to retailers, associate the features of Plaintiff's catalogue with Plaintiff.
c. Consumer Exposure to Sarah Arizona
Essentially all of the marketing and promotional efforts for SARAH ARIZONA clothing are made to the trade and not to consumers directly. Plaintiff's "primary" means of promoting its goods under the SARAH ARIZONA mark is through its catalog, which is distributed only to the trade.
Plaintiff does no consumer advertising, although certain forms of consumer promotion do take place. First, the Sarah Arizona catalog is shown to some consumers. Specifically, a store in New York sends the catalogs to customers outside the country, including possibly to Monaco; "a couple of accounts down in Florida" put the catalog cover in their dressing rooms; and, pictures from the catalog have been used Mown in Naples quite a bit, in the newspaper." (Transcript of September 3 Hearing ("Tr.") at 36-37). This evidence, however, does not persuade the Court that a significant number of consumers have exposure to the catalog or its contents.
Second, the SARAH ARIZONA mark is displayed at openings of some new Nordstrom stores and in-store promotions, as well as at some industry trade shows. However, Plaintiff provided no evidence of how many such store openings or events occurred since 1998, the manner in which the signs were displayed, how long such signs were displayed, or how many consumers might have seen the signs. Moreover, the signs Plaintiff offered as exhibits at the September 3 Hearing bear only the Sarah Arizona trade name, and not the Sarah Arizona trade dress. The signs are comprised of the words "Sarah Arizona," in a simple font, in upper and lower-case letters. They do not feature a model dressed in Sarah Arizona clothing, and, importantly, do not use the open-R font used on the cover of the Sarah Arizona catalogue.
Third, Sarah Arizona and its retail customers engage in "cooperative advertising/' in which retailers advertise and promote Sarah Arizona by name in advertisements for its own stores, in return for Sarah Arizona's contribution to the expense of running the advertisements. Plaintiff does most of its cooperative advertising with Nordstrom, although it engages in cooperative advertising with other retailers as well. Plaintiff made no showing of how much cooperative advertising Sarah Arizona does or how much Sarah Arizona spends on such advertising.
The Court declines to find that: Plaintiff has regular newspaper advertisements with Nordstrom, because Plaintiff failed to present sufficient evidence about them.
As examples of the cooperative advertising, Plaintiff submitted four pictures taken from Nordstrom catalogues and four pictures from another company's catalogue. The advertisements mention Sarah Arizona by name and feature Sarah Arizona clothing. None of them, however, bear plaintiff's claimed trade dress, and although two of the pictures show Sarah Arizona's reversible skirts, none show a matching seed-stitched sweater.
d. Consumer Recognition of Sarah Arizona
Plaintiff cites three types of indirect evidence to demonstrate consumer recognition of SARAH ARIZONA and consumer association of printed skirts and color-coordinated sweaters with Sarah Arizona. First, two representatives of BK Showroom — a retailer that has profited several million dollars from its sale of Sarah Arizona clothing — stated that the SARAH ARIZONA trademark symbolizes "high-quality, artistic prints and designs, typically shown on reversible skirts . . . and worn in combination with coordinated sweaters."
Second, Plaintiff has been told by some of its smaller retailers that customers ask for Sarah Arizona clothing by name. Plaintiff has also received calls from customers asking where they can find Sarah Arizona clothes.
Third, Plaintiff asserts that it has received unsolicited media coverage of its reversible skirts and color-coordinated sweaters in some small local publications. Plaintiff's evidence of this coverage consists of three web pages. Only one of these pages refers to reversible skirts.
In all, Plaintiff's evidence makes clear that some consumers are aware of plaintiff's trademark, but is insufficient to establish that consumers associate any particular style of clothing exclusively with the Sarah Arizona trademark or with the name Sarah.
2. SML Sport
Defendant SML Sport Ltd. ("SML") was formed in 1979, and designs, sells, and arranges for the contract manufacture of moderately-priced women's apparel, such as knitted sweaters, fashion T-shirts and knit jumpers. SML has marketed a majority of its products under its own brand names, including SML SPORT, SML DESIGN, BASIC NECESSITIES, CLAUDIA D., and LAUREN HANSEN, and has also produced products for private label manufacturers.
SML sells products through leading warehouse clubs, department stores and specialty stores, including J.C. Penney, Sak's, Inc., Filene's, Chico's, and Sam's Club. In 2002, its gross sales exceeded $40 million. 50% of its total revenue comes from the sale of sweaters, which it manufactures in a variety of styles and fabrics, including acrylic, cotton and polyester. a. SML's Development of the SARAH McKENZIE Line
In or around the fall of 2002 and spring 2003, SML began to actively develop new product lines, including color coordinated sweater and printed skirt sets. Senior management at SML considered potential trademarks to be used in connection with the proposed new collection, aiming to find a brand name that evoked a classic "country club" connotation consistent with the style of the collection to be offered by the new line. One of SML's Vice Presidents had used the fictitious name SARAH McKENZIE when he was operating his own women's apparel company. The Sarah McKenzie brand name was not actually used, but the Vice President had purchased 6,000 labels bearing the name Sarah McKenzie in gold lettering and trim on a hunter green background, which he still possessed at the time SML was selecting its brand name.
SML decided to use the Sarah McKenzie name, and filed a trademark application in the United States Patent and Trademark Office dated May 15, 2003. The application sought to register the mark SARAH McKENZIE for "ladies apparel, namely sweaters, t-shirts, sweatshirts, dresses and pants." b. SML's Advertisement for its Sarah McKenzie Line
"Skirts" are not listed as one of the five categories of "women's apparel" on the application.
On or about July 22, 2003, SML mailed approximately 2,500 postcards to retailer buyers advertising the new Sarah McKenzie line. The postcard bears striking similarities to the cover of Sarah Arizona's catalogues, and particularly to the Fall 2003 catalogue. Specifically, one side of the SARAH McKENZIE postcard contains a full-length picture of a woman with shoulder-length blonde hair, standing, centered on the page, with one leg canted to the side at an angle, wearing a reversible skirt and sweater and standing in front of a tan background. The model is shown wearing a reversible, printed georgette skirt and coordinated rayon seed stitch sweater. The words "Sarah McKenzie" do not appear in the same form that they do on the previously-made labels (i.e., gold letters, gold rectangular border and a hunter green background). Instead, SARAH McKENZIE is spaced across the middle of the picture in white, all capital, block letters. Most notably, the letter "r" appears in the same "open-R" font as does the "r" on Sarah Arizona's catalogue.
The reverse side of the postcard reads: "Introducing printed georgette skirts and coordinated rayon seed stitch sweaters by Sarah McKenzie from SML Sport." The prices are listed below this text as $20.00 for sweaters and $20.00 for skirts, and the name and contact information for SML appear in small print at the bottom.
On August 6 and August 20, 2003, an industry newspaper, Women's Wear Daily, contained an advertisement for SARAH McKENZIE with the same picture and text that is on the postcard. However, the "r" of Sarah was not "open."
As of the time of the post-hearing submissions, SML had received orders for SARAH McKENZIE products from thirty to forty buyers (for approximately 20,000 garments). SML had not yet sold any of the SARAH McKENZIE coordinated sweaters and printed skirt sets. The garments will have, or already have, the gold and green Sarah McKenzie labels previously described.
3. Plaintiff's Actions to Stop Defendant's Advertisement
On August 5, 2003, counsel for Sarah Arizona sent a letter to SML demanding that SML cease and desist from using the SARAH McKENZIE designation and advertising. Sarah Arizona asserted claims of trademark infringement, unfair competition, and potential violations of copyrights Sarah Arizona held in its designs.
On August 11, 2003, counsel for SML responded to Sarah Arizona's letter asking for further information about plaintiff's claims. Sarah Arizona's counsel responded to the inquiries on August 13th, but informed counsel that unless SML changed the SARAH McKENZIE designation and ceased its promotional activities under that designation, Sarah Arizona would commence suit.
On August 22, 2003, Sarah Arizona commenced suit against SML by filing a Complaint alleging trademark infringement, unfair competition, and other claims under federal and New York law. 4. Confusion Resulting from SML's Advertising
The Complaint alleges intentional wrongdoing by Defendant. In support of this claim, Plaintiff discusses a meeting that occurred on August 5, 2003, between two Sarah Arizona employees and a salesman/ representative of SML named Kenneth Weinberg, in SML's New York office. Plaintiff alleges that, among other things, Mr. Weinberg stated that Sarah Arizona "was our inspiration." In response, SML proffered a declaration by Mr. Weinberg, in which he states that he had "no recollection" of making the statement. Even if Mr. Weinberg made this statement, the Court finds that it does not support an inference of intentional wrongdoing by SML.
During the September 3-4 Hearing, Plaintiff testified about potentially lost orders allegedly due to SML's Sarah McKenzie advertisement, with one of its best retailer customers, Von Maur, which is a chain of approximately 21-22 specialty department stores located throughout the Midwest. Specifically, Plaintiff recounted how a buyer for Von Maur visited the Sarah McKenzie showroom, where she was allegedly offered Sarah McKenzie seed-stitch sweaters for sale at the wholesale price of $15.00 each. The buyer later asked a Sarah Arizona representative whether Sarah Arizona would give her an additional discount of approximately two to three percent (the store already receives a discount because of the substantial amount of merchandise it buys) on seed-stitch sweaters. After speaking with Dana Braun, Sarah Arizona's President, the representative denied the buyer's request.
Notably, however, Plaintiff's testimony failed to demonstrate that the buyer was confused by the name SARAH McKENZIE. To the contrary, her testimony indicated that the buyer was able to distinguish the lines' origins and was attempting to capitalize on the availability of the cheaper Sarah McKenzie line to extract a lower price from Sarah Arizona.
Plaintiff presented other evidence showing that some retail buyers were confused as to the origins of the Sarah McKenzie line upon receipt of the postcard. However, Plaintiff did not establish that an appreciable portion of her buying market was confused, or that the confusion resulted from the name or mark Sarah McKenzie rather than from the postcard that bore an image very similar to Plaintiff's catalogue cover. Plaintiff also did not demonstrate that any buyers acted on their alleged confusion to Plaintiff's detriment. 5. The Current Market a. Marks Bearing the Name "Sarah" or "Sara"
Aside from the two marks at issue, the following marks are also used for women's clothes. SARAH BENTLEY, SARA CAMPBELL, SARAH ELIZABETH, SARAH BRYSON, SARAH'S, SARAH BORGHI, SARAH SPENCER, SARAH'S ANGELS, SARAH ALDEN, SARAH DEAN NEW YORK, SARAH MORGAN, SARAH RICHARDS, SARAH SWEETHEART, and SARAH WILLIAMS. Many of these names appear in the federal registry of the U.S. Patent Trademark Office. One of the companies, Sara Campbell, markets printed skirt and color-coordinated sweaters that are competitive with Plaintiff's product.
Plaintiff submitted, as part of her post-hearing briefs, affidavits presenting information concerning the viability of, and the similarity of the products manufactured by, some of the companies bearing the same Sarah. This information was untimely and therefore not used in the Court's analysis.
b. Manufacture and Sale of Reversible Skirts and Color-Coordinated Sweaters
Reversible printed skirts featuring two different designs in a single skirt are commonplace in the industry. Similarly, color coordinated sweaters and printed skirts have been a standard theme for several years in the women's clothing industry and are offered by countless designers at varied price points. Currently, this style of clothing is popular in the fashion industry and with consumers.
Many companies have sold, and continue to sell, these coordinated sets in an array of natural and synthetic fibers and fabrics, and employ various knitting stitches such as textured and seed stitching. Over the past few years, rayon has become a popular synthetic fiber used in women's clothing. Designers other than Sarah Arizona and Sarah McKenzie have paired printed skirts with color-coordinated tops, including Talbots, California Style, Monterey Bay, Chadwick's, Rena Rowan, Jones New York, Style Co. (Macy's private label), Versailles, Drama, Swat Fame, JC Penney, Sara Campbell, Carol Anderson, Casual Studio, Inderia, and several others. Regardless of whether these manufacturers copied Plaintiff's idea, as Plaintiff argues, there is insufficient evidence in the record to conclude that consumers associate printed and reversible-printed skirts with color coordinating sweaters exclusively with plaintiff.
CONCLUSIONS OF LAW
Plaintiff seeks relief for infringement of a registered trademark under section 32(1) of the Lanham Act, 15 U.S.C. § 1114 (1), and for infringement of unregistered mark or trade dress under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Specifically, Sarah Arizona contends that SML has infringed their trademark by choosing a name confusingly similar to Sarah Arizona, and using it on goods that are comparable to those marketed by Sarah Arizona namely printed and reversible skirts and color-coordinated seed-stitched sweaters. Additionally, Sarah Arizona argues that SML infringed Sarah Arizona's trade dress, which has confused or will likely confuse, consumers into believing that the Sarah McKenzie line either originates from, or is somehow related to, Sarah Arizona. Plaintiff also claims such confusion will irreparably harm Sarah Arizona unless SML is enjoined.
Section 32(1) of the Lanham Act provides in pertinent part:
[a]ny person who shall, without the consent of the registrant (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.15 U.S.C. § 1114(1).
Section 43(a) of the Lanham Act provides in pertinent part:
Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.15 U.S.C. § 1125 (a)(1)(A).
Sarah Arizona is not claiming copyright infringement regarding the catalogue cover image or the prints on the skirts.
A. Preliminary Injunction Standard
Preliminary injunctive relief is an extraordinary and drastic remedy that should not be granted routinely. Buffalo Forge Co. v. Ampco-Pittsburgh Corp., 638 F.2d 568, 569 (2d Cir. 1981); Yurman Design Inc. v. Diamonds Time, 169 F. Supp.2d 181, 185 (S.D.N.Y. 2001). In order for a preliminary injunction to issue, plaintiff must demonstrate: (1) a likelihood of irreparable injury if the injunction does not issue; and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation plus a balance of hardships tipping decidedly toward the plaintiff. Federal Exp. Corp. v. Federal Espresso, Inc., 201 F.3d 168, 173 (2d Cir. 2000); see also Home Box Office, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d 1311, 1314 (2d Cir. 1987).
A showing of likelihood of consumer confusion "establishes both a likelihood of success on the merits and irreparable harm" necessary to obtain injunctive relief under both Section 32(1) and 43(a) of the Lanham Act. New Kayak Pool Corp. v. R P Pools, Inc., 246 F.3d 183, 185 (2d Cir. 2001). The ultimate inquiry for likelihood of confusion is the "likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987) (citation omitted).
B. Trademark Infringement Claim
In order to prevail on a claim of infringement of its registered mark, plaintiff must demonstrate that it (1) has a valid mark subject to protection; and (2) the defendant's use of its mark results in a likelihood of confusion. Gruner + Jahr USA Pub, v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993).
1. SARAH ARIZONA has a Valid Mark
Registered trademarks are presumed to be distinctive and should be afforded the highest level of protection. Lois Sportswear, U.S.A, Inc. v. Levi Strauss Co., 799 F.2d 867, 871 (2d Cir. 1986). In this case, it is incontestable that Plaintiff owns a registered mark, SARAH ARIZONA, for use in connection with "women's clothing, namely dresses, skirts, sweaters, blouses, pants, shorts and belts." 2. Likelihood of Confusion
Although Plaintiff's trademark is entitled to protection, the Court notes that the injunction relief requested by Plaintiff extends well beyond the parameters of the trademark.
A likelihood of confusion is demonstrated by showing a "likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Lang v. Ret. Living Pub. Co., Inc., 949 F.2d 576, 579-80 (2d Cir. 1991) (citation omitted); see also Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998).
The Second Circuit has set forth the following eight non-exclusive factors for courts to consider in determining whether a likelihood of confusion exists: (1) the strength of the plaintiff's mark; (2) the similarity of the plaintiff's and defendant's marks; (3) the competitive proximity of the products; (4) the likelihood that the plaintiff will `bridge the gap' by entering defendant's market; (5) actual confusion between the products; (6) good faith on defendant's part; (7) the quality of defendant's product; and (8) sophistication of buyers. Columbia Pictures Indus., Inc. v. Screen Gems Film Co., Inc., No. 99 Civ. 4407, 2001 WL 1254838, *6 (S.D.N.Y. Oct. 18, 2001) (citing Polaroid Corp., 287 F.2d at 495). Evaluation of these factors should not be mechanical, and no single factor should be determinative. Plus Prods, v. Plus Discount Foods, Inc., 722 F.2d 999, 1004 (2d Cir. 1983). Rather, a court should focus on the ultimate question of whether consumers are likely to be confused, see Tri-Star Pictures, Inc. v. Leisure Time Prods., B.V., 17 F.3d 38, 43 (2d Cir. 1994), and a should take into account the overall context in which the marks appear and the totality of the circumstances that could cause consumer confusion. David Yurman, 169 F. Supp.2d at 186 (citing EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmolpulos, 228 F.3d 56, 66 (2d Cir. 2000)).
The Court will not address "bridging the gap" in this opinion, as the record does not support a finding on this factor that affects the likelihood of confusion analysis.
a. SARAH ARIZONA'S Strength in the Marketplace
The "strength" of a mark is its "tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source." Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 479 (2d Cir. 1996) (citations omitted); see also Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997) (staring that the strength of a mark "ultimately depends on the degree to which the designation is associated by prospective purchasers with a particular source") (citations and quotation marks omitted). In assessing the strength of a mark, the Second Circuit applies a two pronged analysis: (1) conceptual strength on the spectrum of distinctiveness, and (2) commercial distinctiveness in the marketplace.See MG Elecs. Sales Corp. v. Sony Kabushiki Kaisha, 250 F. Supp.2d 91, 101 (E.D.N.Y. 2003) (citing Lang, 949 F.2d at 581).
Judge Friendly set out the governing law regarding trademark distinctiveness:
"Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes [of marks] are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful."Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), quoted in Lois Sportswear, 799 F.2d at 871.
The name "Sarah Arizona" is not a generic term and does not describe or suggest plaintiff's product, women's apparel, in any way. Therefore, the mark is arbitrary or fanciful. Id. at 871.
This finding, however, does not end the analysis. A mark may be categorized as arbitrary or fanciful, but may nonetheless lack commercial strength in the marketplace and therefore ultimately be deemed weak. See Mondo, Inc. v. Sirco Int'l Corp., No. 97 Civ. 3121, 1998 WL 849401, *5-6 (S.D.N.Y. Dec. 7, 1998); Oxford Indus., Inc. v. JBJ Fabrics, Inc., 6 U.S.P.Q.2d 1756, 1760 (S.D.N.Y. 1988) (citing Playboy Enters, v. Chuckleberry Pub., Inc., 486 F. Supp. 414, 420 (2d Cir. 1980).
Distinctiveness in the marketplace is influenced significantly by the marks of third parties. Third parties' usage of similar marks, in the same industry, weighs heavily against the finding that a mark is commercially strong. See W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993), limited on other grounds, Deere Co. v. MTD Prods., Inc., 41 F.3d 39, 46 (2d Cir. 1994); see also Nabisco v. Warner-Lambert Co., 32 F. Supp.2d 690, 698-99 (S.D.N.Y. 1999), aff'd, 220 F.3d 43 (2d Cir. 2000) (finding that strength of the "Ice Breakers" mark was "considerably weaken[ed]" by extensive third party use of the term "Ice" within the confections field).
In addition, a Court may find that a mark does not infringe another mark where the common word between the two marks is used by many parties; in other words, where there is a "crowded field." Estee Lauder, 108 F.3d at 1511 (plaintiff's mark not wholly original, as evidenced by multiple registrations of marks containing same term, and not infringed by mark containing same term); see also Western Publishing Co. v. Rose Art Indus., Inc., 910 F.2d 57, 61 (2d Cir. 1990), superceded on other grounds, Paddington Corp. v. Attiki Imps. Distribs., Inc., 996 F.2d 577 (2d Cir. 1993) (denying injunctive relief to owner of the mark LITTLE GOLDEN BOOKS against GOLDEN SLATE, a manufacturer of similar goods, in part because of the multiple registrations of marks containing the term GOLDEN for similar goods).
In this case, Plaintiff has presented persuasive evidence that SARAH ARIZONA is a successful label, but has not shown that the mark is distinctive in the marketplace. The record shows numerous marks that are registered and in use in the clothing industry that incorporate the name SARAH or SARA. Plaintiff attempts to distinguish the other Sarah marks by arguing that they are not used on identical clothing lines. The Court does not agree that the marks must be used on identical items in order to contribute to the "crowded field" analysis. Instead, the Court finds that the prevalence of Sarah marks diminishes the commercial strength of the trade name Sarah Arizona.
Third party registrations are probative of the popularity of a term. See, e.g., Streetwise, 159 F.3d at 744 (noting that a trademark search revealed extensive registrations incorporating the terms "street7' and "wise"); Estee Lauder, 108 F.3d at 1511 (concluding the mark was weak based upon evidence of more than 70 applications and registrations incorporating the allegedly protected element of the plaintiff's mark);Nabisco, 32 F. Supp.2d at 698-99 (extensive third party use and/or registration of the term "Ice" weakened the strength of plaintiff's mark).
At least one of the marks — SARA CAMPBELL — appears on a clothing line comprised of printed skirts and color-coordinated sweaters very similar to those marketed by Plaintiff.
Moreover, it is clear that both Sarah Arizona and Sarah McKenzie market clothing other than printed skirts and seed-stitched coordinated sweaters.
Plaintiff has provided little evidence indicating that printed and reversible-printed skirts and color-coordinating sweaters are so associated with plaintiff and the SARAH ARIZONA brand, that any other SARAH or SARA mark (regardless of the surname) used in connection with such goods would be associated with plaintiff. Therefore, the Court concludes that plaintiff's mark is not strong enough to preclude the use of any SARAH mark, in connection with printed or reversible-printed skirts and color coordinated sweaters.
b. Similarity of the SARAH ARIZONA and SARAH McKENZIE Marks
Both trade names have a similar element, the word "Sarah," but as discussed above, this word is common to many marks for women's clothing, such that the remaining elements of the marks may be relied upon to distinguish the marks. The surnames do not look or sound similar.
Additionally, the presentations of the mark on their respective clothing labels do not create the same overall impression. MG Elecs., 250 F. Supp. at 102-3. The labels have different color schemes, different design elements, and different typefaces. c. Other Polaroid Factors
As an initial matter, the Court must determine which market is the relevant market to analyze: retail buyers or consumers. The Court is persuaded that the structure of the market at hand necessitates examination of both the retail buyer market and the consumer market. See Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 72 (2d Cir. 1994); Cadbury Beverages, Inc., 73 F.3d at 480 (directing a court to look at the manner in which the products are advertised and the channels through which the goods are sold in order to determine the structure of the market); see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-768 (1992) (stating that the Lanham Act was intended not only to protect consumers, but also "to protect persons engaged in . . . commerce against unfair competition11) (citations omitted).
Plaintiff concedes elsewhere in its papers that both the retail buyer market and the consumer market are relevant to the sophistication issue.
1. Consumer Market
Consumer confusion, in this case, could only result from the parties' labels and from their trade names, which appear on similar types of clothing. There are notable differences, however, that could lead a consumer to understand that the Sarah McKenzie and Sarah Arizona lines are not related. Cf. Estee Lauder; 108 F.3d at 1511-12. First, SML's SARAH McKENZIE goods are sold at significantly lower prices than plaintiff's SARAH ARIZONA goods. Second, as stated by Plaintiff, the materials used in the Sarah McKenzie clothing is inferior to that used in Sarah Arizona clothing. Third, SML's products will not only be sold to consumers at a lower price, but as part of an entire line of clothing of which printed skirts with color-coordinating sweaters constitute only a small part. If, as plaintiff claims, printed skirts with color-coordinating sweaters are the complete focus of plaintiff's company and define the company to the public, then consumers would be unlikely to ascribe a line of clothing with other products and a different name to plaintiff.
Regarding the trade names and the labels, as stated previously, the similarities between the marks would not likely provoke consumer confusion. Cf. McGregor-Doniger, 599 F.2d at 1133.
These facts weigh against a finding that the parties' products are proximate and that consumers would be confused as to their origin.
2. Sophistication of Retail Buyers
Retail buyers are generally considered sophisticated buyers who are not easily confused. W.W.W. Pharm., 984 F.2d at 576. Although this assumption can be rebutted, Plaintiff has not successfully done so here. Plaintiff has presented some evidence that some retail buyers were confused as to the origins of the Sarah McKenzie line upon receipt of the SML postcard, but has presented no evidence that this confusion resulted from Defendant's potential infringement of Plaintiff's trademark rather than its trade dress. To the contrary, Plaintiff's own testimony regarding the buyer from Von Maur indicates that a buyer would not be confused as to the origins of the Sarah McKenzie line.
Furthermore, any initial confusion resulting from the name Sarah McKenzie is quickly and easily clarified when the buyer contacts the manufacturer to make purchases. Just as in Merriam-Webster, 35 F.3d 65, 72 (2d Cir. 1992), "it is virtually inconceivable" that a retail buyer would contact SML believing it was Sarah Arizona.
d. SML's Good Faith
The record does not support Plaintiff's contention that SML adopted the name Sarah McKenzie in an attempt to find a name confusingly similar to Sarah Arizona or in order to capitalize on Sarah Arizona's good will and reputation.
Because almost all of the factors weigh in favor of the Defendant, the Court holds that Plaintiff has not established a likelihood of success on the merits regarding the probability of confusion between Plaintiff's and Defendant's trademarks. Likewise, Plaintiff has not shown sufficiently serious questions going to the merits of her claim of trademark infringement. Accordingly, Plaintiff's request for a preliminary injunction on the basis of trademark infringement is denied.
C. Trade Dress Infringement
Although Plaintiff has not convinced the Court that it could succeed on the merits of her trademark infringement claim, the Court is persuaded that there is a likelihood of success on her trade dress infringement claim. Because there are striking similarities between the Sarah McKenzie postcard advertisement and Sarah Arizona's catalogue cover, and there is a likelihood of bad faith by SML regarding these similarities, this claim differs from Plaintiff's trademark claim.
Statutory protection of unregistered trademarks under Section 43(a) of the Lanham Act extends to trade dress. Fun-Damental Too, Ltd, v. Gemmy Indus. Corp., Ill F.3d 993, 999 (2d Cir. 1997). Trade dress "encompasses the design and appearance of the product together with all the elements making up the overall image that serves to identify the product presented to the consumer." Id. Elements comprising a product's trade dress may include features such as size, shape, color combinations, texture, graphics, or a particular sales techniques, see Two Pesos, 505 U.S. at 764 n. 1, as well as "the appearance of labels, wrappers, and containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers." Fun-Damental Too, 111 F.3d at 999 (quoting Restatement (Third) of Unfair Competition § 16 cmt. a (1995)); see also Philip Morris Inc. v. Star Tobacco Corp., 879 F. Supp. 379, 383 (S.D.N.Y. 1995) (stating that trade dress "is essentially its total image and overall appearance") (citations omitted). In-addition, a product's image may be created by "words, symbols, collections of colors and designs, or advertising materials or techniques that the purchasing public has come to associate with a single source." Harlequin Enter. Ltd., v. Gulf Western Corp., 503 F. Supp. 647, 649 (S.D.N.Y. 1980), aff'd, 644 F.2d 946 (2d Cir. 1981)) (citation omitted);Abercrombie Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 632 (6th Cir. 2002) (stating that plaintiff's clothing catalog "containing a specific method of presenting products in conjunction with . . . the image [plaintiff] intentionally associates with its clothing11 constituted trade dress worthy of legal protection);see also SGC Communication Res., LLC v. Seminar Center, Inc., No. 98 Civ. 2724, 2001 WL 274053, *6 (S.D.N.Y. Mar. 20, 2001) (addressing trade mark infringement of plaintiff's catalogue).
In order to prevail on a claim of infringement of tirade dress under Lanham Act Section 43(a), a plaintiff must prove, (1) that its trade dress is distinctive, and (2) that a likelihood of confusion exists between its mark or trade dress and the defendant's. Paddington Corp., 996 F.2d at 582.
1. Sarah Arizona's Trade Dress Warrants Protection
Trade dress warrants protection if it is inherently distinctive or has acquired distinctiveness through secondary meaning. Two Pesos, 505 U.S. at 769 (citing Restatement (Third) of Unfair Competition § 13). Even if "each element of a trade dress individually might not be inherently distinctive, it is the combination of elements that should be the focus of the distinctiveness inquiry."Best Cellars, Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp.2d 431, 451 (S.D.N.Y. 2000) (citation omitted).
In this case, Sarah Arizona's trade dress, as it is featured on its catalogue covers, consists of printed skirts and color coordinated sweaters, displayed with the SARAH ARIZONA mark in a block, capital letter, open-R typeface, with spaces between the letters horizontally across the middle of the model wearing the skirt and sweater. Although several of these elements of this trade dress, in and of themselves, are not distinctive and could be construed as functional, the entire presentation — including the use of the open — R font — is distinctive.
Plaintiff has presented sufficient evidence to support a finding of a likelihood of success that the Sarah Arizona catalogue has acquired a secondary meaning. There are six elements that Courts use as a guide in its analysis of secondary meaning: (1) advertising expenditures; (2) evidence that consumers link the trade dress to a particular source; (3) unsolicited media coverage of the product; (4) the sales success of the product; (5) attempts to plagiarize the product; and (6) length and exclusivity) of use. See Thompson Med. Co. v. Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985). None of these elements are determinative and not every one of them must be proved to make a showing of secondary meaning. SGC Communication Resources, 2001 WL 274053, at *6.
In this case, Sarah Arizona, whose primary marketing technique has been the distribution of its catalog, has had substantial revenues; Plaintiff has been using this catalogue look since 1998; and Plaintiff has spent substantial amounts in disseminating the catalogue to 10,000 retailer buyers three to four times each year. Cf. SGC Communication Resources, 2001 WL 274053, at *7. Defendants' copying is further evidence that plaintiff's catalog has acquired secondary meaning. Id. 2. There is a Likelihood of Confusion Between Sarah McKenizie's and Sarah Arizona's Trade Dress
The Court analyzes the likelihood of confusion as respects retail buyers, who are in direct contact with the trade dress at issue and who are the "persons who are likely to purchase that product."Merriam-Webster, Inc. v. Random House, Inc., 35 F.3f 65, 72 (2d Cir. 1994).
A Court should use the Polaroid factors discussed above when analyzing a claim for trade dress infringement. Fun-Damental Too, 111 F.3d at 1002-03. Although the analysis of some of the factors are the same for both the trademark and trade dress infringement claims in this case, as previously noted, the degree of similarity and the junior user's bad faith are different.
Specifically, SML's postcard advertisement features the same widely-spaced, block letter, open-R font, in the same place on the page and in the same relationship to the model wearing a reversible printed skirt and coordinated seed stitched sweater, with the same background as Sarah Arizona's Fall 2003 catalogue.
Similarly, Plaintiff could likely demonstrate that Defendant created or disseminated their advertisement in bad faith. SML's use of the font is evidence of deliberate copying and intent to cause confusion.Fun-Damental Too, 111 F.3d at 1004 ("[T]he combined effect of placing an identical product in copied packaging could support the inference that the `copying' manufacturer/ distributor was acting with the intent to create confusion with the senior user's product."); Cf. Polo Fashions, Inc. v. Extra Special Prods., Inc., 451 F. Supp. 555, 562 (S.D.N.Y. 1978) (stating that a second comer to market has responsibility to avoid confusion).
Having compared the catalogue cover with the postcard, this Court finds that the advertisements "create the same general overall impression such that a consumer who has seen the [plaintiff's] trade dress would, upon later seeing the [defendant's] trade dress alone, be confused." FunDamental Too, 111 F.3d at 1004. Accordingly, the Court holds that there is a likelihood of confusion regarding the origins of the Sarah McKenzie line, and that Plaintiff would likely prevail on the merits of her trade dress claim.
In addition, SML has not conclusively shown that there is no likelihood of confusion.
This holding is limited, however, to the specific trade dress as portrayed on the cover of Sarah Arizona Catalogues starting in spring 2000 until the present time, and as displayed in the specific infringing postcards disseminated by SML.
SML has represented that it does not intend to distribute in the future the postcard that is part of the basis of Plaintiff's suit. Defendant asserts that this representation "sufficiently demonstrate[s] that there is no reasonable expectation that SML will resume use of the postcard . . . in the future," and that Plaintiff's trade dress infringement claim is therefore moot. The Court disagrees. First, defendant has not agreed to stop publishing all materials and images that infringe on Plaintiff's trade dress, including advertisements similar to the initial ones in Women's Wear Daily. Second, glossing over this claim — as defendants invite the Court to do — minimizes Defendant's behavior, which could constitute willful infringement of Plaintiff's trade dress, and might permit defendant to engage in the same infringing behavior in the future.
Because Plaintiff has established that it is likely to prevail on a claim of trade dress infringement, irreparable harm is presumed.Federal Exp. Corp., 201 F.3d at 171.
CONCLUSION
For the reasons stated above, Plaintiff's motion for a preliminary injunction on her claim of trademark infringement is DENIED. Plaintiff's motion for a preliminary injunction, however, on the claim of trade dress infringement is GRANTED. Defendant is hereby ENJOINED from using the block letter, all capital, open-R font that is employed by Sarah Arizona on any and all advertising and promotional materials in connection with the Sarah McKenzie line.Bond
Pursuant to Federal Rules of Civil Procedure Rule 65(c), the Court orders Plaintiff to file with the Clerk of the Court a $1000 bond on or before December 3, 2003.
The parties are ordered to submit an agreed upon case management plan, which should include a discovery and a motions schedule, on or before December 8, 2003.
SO ORDERED.