Opinion
17-cv-4233 (LDH) (RLM)
2018-09-29
KOHLER CO., Plaintiff, v. BOLD INTERNATIONAL FZCO and Rocell Bath Limited, Defendants.
MEMORANDUM AND ORDER
: Plaintiff commenced this action on July 17, 2017. (See Complaint, ECF No. 1.) Defendants failed to answer or otherwise defend this case, and therefore defaulted on October 5, 2017. (Clerk's Entry of Default, ECF No. 12.) Plaintiff subsequently moved, pursuant to Federal Rule of Civil Procedure 55(b)(2), for default judgment. (Mot. for Default J., ECF No. 13.) On October 23, 2017, the Court referred Plaintiff's motion to United States Magistrate Judge Roanne L. Mann for a report and recommendation.
On June 19, 2018, Magistrate Judge Mann issued a Report and Recommendation (the "R & R"), wherein she recommended that Plaintiff Kohler Co.'s ("Kohler") motion for default judgment against Defendants Bold International FZCO ("Bold") and Rocell Bath Limited ("Rocell") (collectively "Defendants") be granted in part and denied in part. (R & R at 739, ECF No. 33.)
The R & R recommends that Plaintiff's motion for default judgment be granted with respect to Plaintiff's trademark infringement and false designation of origin claims under the Lanham Act and New York common law, and denied with respect to Plaintiff's unfair competition and trademark dilution claims under New York law. (Id. ) The R & R also recommends that the Court deny Plaintiff's request for injunctive relief. (Id. at739.) On July 20, 2018, Plaintiff filed an objection requesting that the Court decline to adopt three aspects of Magistrate Judge Mann's R & R: first , the denial of Plaintiff's request for injunctive relief; second , the R & R's conclusion that Plaintiff's BOLD marks are only moderately strong; and third , the denial of Plaintiff's New York trademark dilution claim. (Obj. to R & R at 1, ECF No. 35.) Additionally, Plaintiff requests that the Court find Defendants liable for trademark infringement and false designation of origin claims under federal and New York law based on a Kohler mark that was registered after Plaintiff moved for default judgment but before Magistrate Judge Mann issued the R & R. (Id. ) Finally, Plaintiff requests that the Court adopt the R & R's recommended entry of default judgment against Defendant Bold as to its trademark infringement and false designation of origin claims under the federal Lanham Act. (Id. )
The Court reviews any portion of the R & R that has been objected to de novo. See Fed. R. Civ. P. 72(b)(3) ; 28 U.S.C. § 636(b)(1)(C). As to the balance, "the district court need only satisfy itself that there is no clear error on the face of the record." Estate of Ellington ex rel. Ellington v. Harbrew Imps. Ltd. , 812 F. Supp. 2d 186, 189 (E.D.N.Y. 2011) (quoting Urena v. New York , 160 F. Supp. 2d 606, 609-10 (S.D.N.Y. 2001) (internal quotation marks and citations omitted)). For the reasons set forth below, the Court adopts Magistrate Judge Mann's thorough and well-reasoned opinion, with the exception of two harmless errors.
The following facts are taken from Plaintiff's complaint and are assumed to be true for purposes of deciding the instant motion.
I. Plaintiff's Marks
Plaintiff Kohler created its first bathtubs and entered the plumbing business in 1883. (Compl. ¶ 10.) In 1965, Plaintiff "introduced bathroom fixtures in vibrant colors, moving away from the pastels that had dominated the market since the 1920s." (Id. ¶ 14.) In order to highlight these "boldly colored products[,]" Plaintiff, in 1967, began to market its products under the slogan THE BOLD LOOK OF KOHLER. (Id. ¶ 15.) Plaintiff introduced environmentally conscious "low-consumption faucets, showerheads, and toilets in 1974." (Id. ¶ 17.) In 1977, Plaintiff "launched its first whirlpool bath line." (Id. ¶ 18.)
Plaintiff has registered the following marks (the "Kohler BOLD Marks" or the "Marks") with the United States Patent and Trademark Office (the "USPTO"):
Mark Reg. No. Filing Date First Use Reg. Status THE BOLD LOOK 1137310 01/22/1979 12/06/1978 Registered OF KOHLER BOLD. 3890954 07/29/2009 03/31/2010 Registered PERFORMANCE. BOLD. POWER. 3901466 07/29/2009 10/31/2009 Registered BOLD. DESIGN. 3927382 07/29/2009 10/31/2009 Cancelled BOLD. 3982059 07/29/2009 11/30/2010 Registered CONSERVATION. BOLD. STYLE. 3986327 07/29/2009 01/31/2010 Registered BOLD. 4049785 09/17/2009 03/31/2011 Registered DURABILITY. BOLD. 4092003 10/18/2010 06/30/2010 Registered EXPERIENCE. LIVE BOLD 4298967 10/20/2011 04/30/2012 Registered BOLD2 5475789 10/1/2014 11/28/2016 Registered
[Editor's Note: The preceding image contains the reference for footnote ]
At the time Plaintiff filed this lawsuit, its application for the BOLD mark was pending. According to USPTO records submitted by Plaintiff to Magistrate Judge Mann, Plaintiff had not yet begun use of that mark. (Default J. Decl., Ex. B, ECF No. 19-2) In its Objection, Plaintiff claims that the USPTO accepted Plaintiff's statement of use for the BOLD mark sometime in April 2018 and that the BOLD mark was registered on May 22, 2018. (Obj. to R & R at 2, ECF No. 35.)
(Id. ¶¶ 22-25; Obj. to R & R Ex. A, ECF No. 35.) The Kohler BOLD Marks cover goods such as toilets, showerheads, bathtubs, sinks, and faucets. (Id. ) The BOLD LOOK OF KOHLER mark appears as follows: [Editor's Note: The preceding image contains the reference for footnote ]
This image is the mark portion of the most recent specimen filed with the USPTO for the 1137310 registration. TSDR, Case ID 73200844, Documents - Specimen , USPTO.GOV (Jan. 30, 2008), http://tsdr.uspto.gov.
Plaintiff has invested in marketing its goods. In 1985, Plaintiff "opened its 36,000 square-foot Kohler Design Center for the purpose of showcasing the dramatic design of [its] kitchen and bath fixtures." (Compl. ¶ 19.) "In the U.S. alone, [Plaintiff] has expended in the tens of millions of dollars on the advertising and marketing of products under the [Kohler BOLD marks] in each of the last five years." (Declaration of James M. Robinson, IV ("Robinson Decl.") ¶ 8, ECF No. 20.) Plaintiff alleges that these marketing efforts have been successful. (Compl. ¶ 23.) "Kohler's sales of products sold under its BOLD trademarks has been in the hundreds of millions of dollars in annual sales in each of the last five years." (Robinson Decl. ¶ 9.) Plaintiff also claims that "[a]s a consequence of [this] extensive advertising, promotion, and use of the Kohler BOLD Marks, Kohler has developed enormous recognition for its goods and services under the [M]arks and has acquired and enjoys a valuable reputation and tremendous goodwill under them." (Compl. ¶ 23.)
II. Defendants' Alleged Infringement
Defendant Bold is a seller of various bathroom fixtures founded in the United Arab Emirates in 2011. (Compl. ¶¶ 5, 30-31.) That same year, Defendant Bold attempted to register the mark BOLD with the Office of Harmonization in the Internal Market (now known as the European Union Intellectual Property Office ("EUIPO")): (Id. ¶ 38.) Plaintiff successfully opposed Defendant Bold's mark based on the likelihood of confusion with its own marks, and Defendant Bold's application was subsequently cancelled. (Id. ¶¶ 40-43.) In 2015, Defendant Bold attempted to register the same mark with the USPTO. (Id. ¶ 32.) The USPTO examiner refused to register the mark given the likelihood of confusion with Plaintiff's Marks. (Id. ¶¶ 34-35.)
In early 2016, Defendant Bold began selling its BOLD-branded goods through Defendant Rocell. (Id. ¶¶ 47-49.) Defendant Rocell maintains a supply of BOLD-branded footwashers in its Briarwood, New York warehouse, and sells those footwashers on Amazon.com. (Id. ¶ 52.) Defendant Bold also maintains a website at mybold.com. (Id. ¶ 31.) In January 2017, Defendant Bold exhibited its BOLD-branded products, including toilets, shower systems, sinks, faucets, and shower heads at a trade show in Orlando, Florida. (Id. ¶¶ 44-46.)
DISCUSSION
I. Evidence Not Presented to the Magistrate Judge
Plaintiff claims that Magistrate Judge Mann's determinations as to Plaintiff's BOLD mark rested on "a factual error that impacts its assessment of liability." (Obj. to R & R at 1.) Specifically, Plaintiff objects that Magistrate Judge Mann referred to Plaintiff's BOLD mark as "unregistered" and "yet-to-be-used," when, in fact, Plaintiff's BOLD mark was registered on May 22, 2018, and its statement of use had been accepted in April 2018. (Obj. to R & R at 1-2.) But what Plaintiff characterizes as "a factual error" is more properly characterized as a lack of diligence on Plaintiff's part. That is, Plaintiff chose not to present evidence of the mark's registration or use to Magistrate Judge Mann. This notwithstanding the fact that Plaintiff's BOLD mark was registered and its statement of use accepted almost four weeks and two months prior to when Magistrate Judge Mann issued the R & R, respectively. Notably, Magistrate Judge Mann was forced to order Plaintiff to produce additional memoranda, declarations, and evidence in support of its deficient motion for a default judgment on two separate occasions. (See Nov. 9, 2017 Order, ECF No. 14 and March 16, 2018 Order, ECF No. 25.) And, Plaintiff's last submission to Magistrate Judge Mann, a declaration in support of its motion for default judgment, was filed on May 2, 2018, two weeks after the USPTO accepted Plaintiff's statement of use. (See Decl. of Ryan Ghiselli in Supp. Mot. for Default J., ECF No. 32.) Plaintiff could have used these opportunities to proffer this additional evidence to Magistrate Judge Mann, but did not.
Against this backdrop, the Court will not use Plaintiff's belatedly adduced evidence to find error in Magistrate Judge Mann's decision. The Second Circuit has found that "[c]onsiderations of efficiency and fairness militate in favor of a full evidentiary submission for the Magistrate Judge's consideration." Hynes v. Squillace , 143 F.3d 653, 656 (2d Cir. 1998). As such, the Second Circuit has routinely "upheld the exercise of the district court's discretion in refusing to allow supplementation of the record upon the district court's de novo review." Id. This is particularly the case where, as here, a party offers no justification for its failure to offer evidence to a magistrate judge. See Pan Am. World Airways, Inc. v. Int'l Bhd. of Teamsters, Chauffeurs, Warehousemen & Helpers of Am. , 894 F.2d 36, 40 n.3 (2d Cir. 1990) (finding that a party "had no right to present further testimony when it offered no justification for not offering the testimony at the hearing before the magistrate"). Rather than proffer a justification, Plaintiff bizarrely suggests that Magistrate Judge Mann erred in failing to consider evidence that was never submitted to her. Plaintiff's objection is overruled.
II. The Strength of Plaintiff's Marks
In finding that Defendants infringed on Plaintiff's Marks, Magistrate Judge Mann classified Plaintiff's Marks as "suggestive, but just barely so, indicating that they are of between weak and moderate inherent strength." (R & R at 720.) Plaintiff does not dispute Magistrate Judge Mann's classification of Plaintiff's Marks as suggestive. Instead, Plaintiff objects that Magistrate Judge Mann erred in finding that Plaintiff's suggestive Marks were of "barely moderate strength." (Obj. to R & R at 14.)
Plaintiff argues that, as a threshold matter, certain presumptions should have attached to the Marks, obviating the need for Magistrate Judge Mann to consider evidence of the Marks' distinctiveness in the marketplace. Specifically, Plaintiff maintains that Magistrate Judge Mann should have found that Plaintiff's Marks were distinctive and therefore strong because: (1) they were classified as suggestive; (2) they were registered with the USPTO; and (3) certain of Plaintiff's Marks were deemed incontestable by the USPTO. (Obj. to R & R at 15-17.) Plaintiff also argues that, putting these presumptions aside, Magistrate Judge Mann failed to properly credit the evidence that Plaintiff presented regarding the distinctiveness of Plaintiff's Marks in the marketplace. (Id. at 15.) For the reasons set forth below, the Court is unpersuaded by Plaintiff's arguments, and finds that Magistrate Judge Mann considered and gave proper weight to these various presumptions and ultimately to the factors relevant to the distinctiveness of Plaintiff's Marks.
A. Presumptions of Distinctiveness and Strength
i. Suggestive marks are not presumed to be inherently strong
Plaintiff first argues that suggestive marks are presumptively distinctive and therefore strong. (Obj. to R & R at 15-16.) Plaintiff is incorrect.
The Second Circuit long ago rejected the notion that the analytical category into which a trademark is sorted is conclusive as to its strength. See Banff, Ltd. v. Federated Dep't Stores, Inc. , 841 F.2d 486, 491 (2d Cir. 1988) ("Although the category in which the mark qualifies—generic, descriptive, suggestive, or arbitrary—is useful in determining its strength, it is not dispositive."); see also Streetwise Maps, Inc. v. VanDam, Inc. , 159 F.3d 739, 744 (2d Cir. 1998) ("Suggestiveness ... does not necessarily determine the issue regarding the strength of the mark."); W.W.W. Pharm. Co. v. Gillette Co. , 984 F.2d 567, 572 (2d Cir. 1993) ("[A] finding of suggestiveness does not guarantee a determination that the mark is a strong one."). That is, "[t]he fact that [a] mark is suggestive is not necessarily controlling on the issue of its strength. Instead, ‘the strength of a mark depends ultimately on its distinctiveness, or its ‘origin-indicating’ quality, in the eyes of the purchasing public.’ " Hasbro, Inc. v. Lanard Toys, Ltd. , 858 F.2d 70, 76 (2d Cir. 1988) (quoting McGregor–Doniger Inc. v. Drizzle Inc. , 599 F.2d 1126, 1131 (2d Cir. 1979) (internal citation omitted)). Indeed, the Second Circuit has itself found certain suggestive marks to be weak or only moderately strong. See, e.g., Banff, Ltd. , 841 F.2d at 491-92 (finding that the mark "Bee Wear" was suggestive and weak); W.W.W. Pharm. Co. , 984 F.2d at 573 (affirming district court's decision that a suggestive mark was "only moderately strong, deserving of trademark protection, but not entitled to the fullest protection available under the law"); Streetwise Maps, Inc. , 159 F.3d at 744 (finding that a district court's determination that a suggestive mark was "relatively strong" was clear error).
In pressing its argument that suggestive marks are considered inherently distinctive and therefore strong, Plaintiff directs the Court to Hasbro, Inc. v. Lanard Toys, Ltd. (Obj. at 15-16.) In Hasbro , the Second Circuit rejected a defendant's argument that the court was required to review evidence of secondary meaning in assessing a suggestive mark's strength. 858 F.2d at 77. Specifically, the Second Circuit found that the defendant "offer[ed] no reason to depart from the general rule that a suggestive term is presumptively entitled to protection and recognition as a strong mark without proof of secondary meaning." Id. As an initial matter, the Second Circuit expressly cabined its holding in Hasbro to "the preliminary injunction stage of litigation." Id. Further, the Second Circuit has previously made clear that the "general rule" relied upon in Hasbro may apply more narrowly than as articulated by Plaintiff. While not expressly limiting a broader application of the "general rule," in McGregor-Doniger , the Second Circuit explained that it would clearly apply in two circumstances: first , "[w]here the products involved are competitive and the marks quite similar," and second , "where the marks involved are virtually identical, even if the products are non-competitive...." 599 F.2d at 1132.
The marks at issue here do not fall into either of the two categories identified by the Second Circuit as triggering the "general rule." That is, Plaintiff has failed to allege facts supporting a finding that the products involved are either competitive or "quite similar." McGregor-Doniger, Inc. , 599 F.2d at 1132.
To determine whether products compete with one another, courts consider "whether the products differ in content, geographic distribution, market position, and audience appeal." W.W.W. Pharm. Co. , 984 F.2d at 573. The Second Circuit has also found that functional distinctions and price differentiation between the products at issue are also relevant to whether such products compete. See Arrow Fastener Co. v. Stanley Works , 59 F.3d 384, 396 (2d Cir. 1995). Plaintiff failed to allege facts relevant to any of these factors. Specifically, Plaintiff failed to allege that its products are distributed through the same channels, in the same geographic markets, to the same audience, and at or around the same price as Defendants' products. While Plaintiff alleges that Defendants sells BOLD footwashers on Amazon.com and BOLD footwashers and faucets through the website rocellbath.com, (Compl. ¶¶ 47, 52-53,) Plaintiff does not claim to sell its own products on the internet. And, while faucets are similar to the bath fixtures and appliances manufactured by Plaintiff, Plaintiff does not sell footwashers. (See Robinson Decl. ¶ 12.) Moreover, as noted by Magistrate Judge Mann, and confirmed by this Court, Defendants' products are no longer even available on Amazon.com and the website rocellbath.com is not currently functioning. (See R & R at 738 n.24.)
The only specific allegation made by Plaintiff with respect to competitive proximity is that Defendant displayed its products at the same trade show as Plaintiff. (Compl. ¶¶ 44-46.) But the Second Circuit has rejected far more detailed evidence of competitive proximity. See W.W.W. Pharm. Co. , 984 F.2d at 574 (finding lack of competitive proximity where products were sold in the same stores but "not displayed in the same areas"). Because Plaintiff has failed to allege competitive proximity beyond a single trade show, the Court finds that Plaintiff has failed to plausibly allege that its products compete with Defendants' products. And, as described in greater detail with respect to Plaintiff's New York trademark dilution claim, the Court finds that Plaintiff's Marks are only moderately similar to Defendants' mark. Therefore, the "general rule" that suggestive marks are presumably distinctive and therefore strong applies with little force here. Instead, consistent with the Second Circuit's guidance, it was appropriate for Magistrate Judge Mann to look beyond the Kohler BOLD marks' analytical category to the evidence provided by Plaintiff supporting Plaintiff's Marks' distinctiveness in the marketplace. As discussed in further detail below, that evidence was wanting.
Magistrate Judge Mann found that the Kohler BOLD marks and Defendants' mark were only "in a moderate degree of competitive proximity." (R & R at 724, 735.) While the Court disagrees with this finding, it does not undermine Magistrate Judge Mann's conclusion, based on the totality of the Polaroid factors, that Plaintiff was entitled to default judgment against Defendants for federal trademark infringement.
ii. Plaintiff's over-reliance on the presumption of registration
Plaintiff similarly misapprehends the presumption that attaches to registered marks. In particular, Plaintiff claims that the registration of a mark creates a rebuttable presumption that a mark is distinctive. (Obj. to R & R at 14-15.) Plaintiff contends that Defendants' default constitutes a "tacit admission" of the distinctiveness of Plaintiff's Marks and therefore Magistrate Judge Mann should have found that Plaintiff's Marks were strong. (Id. at 15.)
As an initial matter, Plaintiff cites no cases standing for the proposition that a defendant's default presumptively establishes the distinctiveness of a mark. To the contrary, the Second Circuit has repeatedly instructed district courts that while a non-defaulting party is entitled to all reasonable inferences from the evidence offered, district courts are required to determine whether the allegations by a non-defaulting party establish liability as a matter of law. See, e.g., Finkel v. Romanowicz , 577 F.3d 79, 84 (2d Cir. 2009) ; Au Bon Pain Corp. v. Artect, Inc. , 653 F.2d 61, 65 (2d Cir. 1981).
Moreover, Plaintiff places too much emphasis on the presumption that attaches to the registration of a mark. It is true that once a trademark is registered with the USPTO, it creates a rebuttable presumption of distinctiveness. "Registration by the [US]PTO without proof of secondary meaning creates the presumption that the mark is more than merely descriptive, and, thus, that the mark is inherently distinctive." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc. , 192 F.3d 337, 345 (2d Cir. 1999). But the fact that a mark is deemed "more than merely descriptive," does not mean that a mark is necessarily strong. "The ‘strength of the mark’ analysis focuses on the distinctiveness of the mark, and while registered marks enjoy a presumption of distinctiveness ... a registered mark may still be deemed weak." Alzheimer's Disease & Related Disorders Ass'n, Inc. v. Alzheimer's Found. of Am., Inc. , 307 F. Supp. 3d 260, 287 (S.D.N.Y. 2018) ; see, e.g., Lang v. Ret. Living Pub. Co. , 949 F.2d 576, 581 (2d Cir. 1991) (affirming district court's determination that a registered suggestive mark was weak); Plus Prod. v. Plus Disc. Foods, Inc. , 722 F.2d 999, 1005 (2d Cir. 1983) (same); Streetwise Maps, Inc. , 159 F.3d at 744 (reversing district court's finding that a registered suggestive mark was "relatively strong"). Here, in keeping with the presumption, Magistrate Judge Mann found that Plaintiff's registered marks were more than merely descriptive: the marks were suggestive. (R & R at 718.) Therefore, Magistrate Judge Mann properly considered and credited the presumption of registration.
iii. Incontestable marks are not inherently strong
Plaintiff objects that Magistrate Judge Mann failed to accord proper weight to Plaintiff's allegation that two of its marks are incontestable. (Obj. to R & R at 16-17.) Under 15 U.S.C. § 1065, an incontestable mark is one that has been in continuous use for five consecutive years following its registration, providing it meets four factors: (1) there has been no adverse final decision related to the owner's right to the mark; (2) there is no proceeding involving the mark pending in the USPTO or in a court; (3) an affidavit attesting to these factors is filed with the Director of the USPTO; and (4) the mark is not generic. 15 U.S.C. § 1065. These elements have been met.
While Plaintiff proffered to the Magistrate Judge that two of its marks are incontestable (THE BOLD LOOK OF KOHLER and BOLD.POWER), in its Objection, Plaintiff argues that three additional marks have been recognized as incontestable (BOLD.DURABILITY, BOLD.STYLE, and BOLD.PERFORMANCE) and two additional marks have declarations of incontestability pending before the USPTO (BOLD.EXPERIENCE and BOLD.CONSERVATION). (Obj. to R & R at 16.) For the reasons set for in Section I supra , the Court declines to consider this additional evidence, which should have been provided to Magistrate Judge Mann for her consideration.
Plaintiff's complaint alleges that "Registration Nos. 1137310 [ (THE BOLD LOOK OF KOHLER) ] and 3901466 [ (BOLD. POWER.) ] are incontestable under Lanham Act Section 15." (Compl. ¶ 27.) Plaintiff also submitted copies of the certificates of registration and status of these marks to Magistrate Judge Mann, indicating that affidavits of incontestability had been accepted by the USPTO. (Decl. of Angela S. Kalsi in Support of Plaintiff's Mot. for Default J., Exhibit A, *3, *8, ECF No. 19-1.) In light of these allegations and supporting evidence, the Court agrees that Magistrate Judge Mann erred in finding that Plaintiff had not established the incontestability of THE BOLD LOOK OF KOHLER and BOLD. POWER marks. The Court does not agree, however, as urged by Plaintiff, that the incontestability of these marks undermines Magistrate Judge Mann's ultimate findings as to the strength of the Marks. Indeed, Magistrate Judge expressly noted that "a finding of incontestability would not materially impact" her evaluation of the strength of Plaintiff's Marks. (R & R at 710 n.1.)
While incontestability is treated as conclusive as to the protectability of a mark, it is only one factor of many to consider in determining the strength of a mark. See, e.g., The Sports Auth., Inc. v. Prime Hosp. Corp. , 89 F.3d 955, 961 (2d Cir. 1996) (noting that courts "must look beyond the incontestability of the mark to independent indicia of strength ... [because] ... independent indicia of strength is relevant to deciding whether the strength of the mark weighs in favor or against a finding of likelihood of confusion"); Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co. v. Meredith Corp. , 991 F.2d 1072, 1078 (2d Cir. 1993) (holding that "incontestability does not relieve the trademark owner from the requirement of proving likelihood of confusion"); see also 2 McCarthy on Trademarks and Unfair Competition § 11:82 (5th ed.) ("The fact that a trademark is the subject of a federal registration that has ripened into incontestable status does not support the conclusion that the mark is ‘strong.’ "). Here, the incontestability of two of Plaintiff's marks does not overcome the deficiencies in Plaintiff's evidence of distinctiveness in the marketplace, as discussed in greater detail below.
B. Distinctiveness in the Marketplace of Plaintiff's Marks
Beyond the presumptions discussed above, to determine the strength of a mark, courts in this Circuit look to evidence of the mark's distinctiveness in the marketplace, also known as a mark's secondary meaning. Secondary meaning, refers to "the extent to which the public has come to identify the mark with a particular product." W.W.W. Pharm. Co. , 984 F.2d at 572-73. In determining secondary meaning, courts consider: "(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark's use." Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, Inc. , 830 F.2d 1217, 1222 (2d Cir. 1987).
In its complaint, Plaintiff alleges that it began marketing products under the tagline THE BOLD LOOK OF KOHLER in 1967. (Compl. ¶ 15.) Plaintiff also alleges that it maintains a 36,000 square-foot center for showcasing its designs, has won numerous awards for its products, and that it "has developed enormous recognition for its goods and services." (Compl. ¶¶ 19-20, 23.) Plaintiff also submitted a declaration stating that it had "expended in the tens of millions of dollars on the advertising and marketing of products under the BOLD family of marks in each of the last five years" and that these efforts had generated "hundreds of millions of dollars in annual sales in each of the last five years." (Robinson Decl. ¶¶ 8-9.)
Magistrate Judge Mann properly credited these allegations and evidence. (R & R at 720–21.) Magistrate Judge Mann found, however, that Plaintiff failed to provide the type of evidence that the Second Circuit has routinely cited as proof of secondary meaning. (R & R at 720–21.) Once again, the Court finds no error in Magistrate Judge Mann's determination.
The Second Circuit has credited a wide variety of evidence as proof of a mark's distinctiveness in the marketplace. For example, in Harlequin Enterprises Ltd. v. Gulf & W. Corp. , the plaintiff proffered consumer surveys indicating that 50% of polled consumers correctly identified the producer based on the mark at issue. 644 F.2d 946, 950 n. 2 (2d Cir. 1981) ; see also Playtex Prod., Inc. v. Georgia-Pac. Corp. , 390 F.3d 158, 164 (2d Cir. 2004) (crediting marketing and consumer studies as proof of the strength of a mark). Similarly, in Scarves by Vera, Inc. v. Todo Imports Ltd. (Inc.) , the plaintiff "produced examples of its advertisements and an impressive volume of articles which had appeared in publications including the New York Times, The New Yorker, Vogue, Town & Country, Harper's Bazaar, and Mademoiselle ... [as] evidence that plaintiff was recognized as a leader in the fashion industry." 544 F.2d 1167, 1170 (2d Cir. 1976). The Scarves by Vera plaintiff even "called three experts on the fashion industry who testified that plaintiff was recognized among the top ‘name’ designers." Id. In Nora Beverages , the Second Circuit credited studies demonstrating the comparative commercial success of a product as well as advertising surveys indicating that the plaintiff's product "was a virtual unknown compared to other leading" producers. Nora Beverages, Inc. v. Perrier Grp. of Am., Inc. , No. 5:91-CV-780 (EBB), 1999 WL 958608, at *4 (D. Conn. Oct. 14, 1999), aff'd , 269 F.3d 114 (2d Cir. 2001). The Nora Beverages court found it "significant that plaintiff[s], though possessed of the financial means, did not undertake a survey of public consumer reaction to the product under actual marketing conditions." Id. (quoting Information Clearing House v. Find Magazine , 492 F. Supp. 147, 160 (S.D.N.Y. 1980) ). The Court finds it similarly significant here.
Plaintiff objects that courts have not specifically required plaintiffs to demonstrate market strength with proof of how its marketing compared to its competitors. (Obj. to R & R at 17.) While the Court agrees that such proof may not be required in every case, the fact that Plaintiff's Marks were "barely suggestive," (R & R at 718,) and deficiencies in the limited evidence Plaintiff did present, required additional proof in this case. For example, while Plaintiff claims to have "expended in the tens of millions of dollars on the advertising and marketing of products under the BOLD family of marks in each of the last five years," (Robinson Decl. ¶ 8,) courts in this Circuit have long recognized that the amount spent on advertising does not necessarily indicate the extent to which customers are aware of specific marks. See, e.g., Exquisite Form Indus., Inc. v. Exquisite Fabrics of London , 378 F. Supp. 403, 411 (S.D.N.Y. 1974) (holding "a mere showing of advertising does not provide a basis for determining the extent of customer awareness of a mark"); Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc. , 478 F. Supp. 2d 340, 371 (E.D.N.Y. 2007) (same); Artisan Mfg. Corp. v. All Granite & Marble Corp. , 559 F. Supp. 2d 442, 450-51 (S.D.N.Y. 2008) (same). As Magistrate Judge Mann correctly noted, if Plaintiff's competitors are investing $100 million on advertising, the fact that Plaintiff is investing $10 million could suggest that Plaintiff's Marks are weak and not strong. Further, while Plaintiff provides general allegations as to its sales, it fails to identify which specific marks generated these sales. The same deficiency applies to Plaintiff's allegations of its generalized marketing. Plaintiff alleges the infringement of ten separate marks, but fails to provide evidence supporting sales or marketing expenses related to each individual mark. Blanket allegations as to gross sales and marketing expenses of ten marks in the aggregate cannot support the conclusion that consumers are aware of any specific mark.
For example, in Lang , the Second Circuit found it telling that the plaintiff's sales were attributable to only one of its products, suggesting that marks for other of its products were not associated in the public's mind with the plaintiff. 949 F.2d at 581.
Indeed, even after Magistrate Judge Mann directed Plaintiff to correct deficiencies in its filings, Plaintiff chose to rest on general and conclusory allegations as to its sales and marketing expenditures. While the Court credits the limited evidence presented by Plaintiff as to the secondary meaning of the Marks, the Court finds, as did Magistrate Judge Mann, that this evidence only suggests that Plaintiff's marks are of moderate strength, particularly where Plaintiff's marks are only barely suggestive.
III. Plaintiff's Request for Equitable Relief
Plaintiff requested a broad array of equitable relief. First , Plaintiff requested that the Court enjoin Defendants from:
"manufacturing, procuring, storing, promoting, distributing, and/or selling products using the Kohler BOLD Marks, or any name or mark that wholly incorporates the Kohler BOLD Marks or is confusingly similar to or a colorable imitation of those marks ... and ... committing any other acts calculated or likely (1) to cause confusion or mistake in the minds of the public or to deceive consumers into believing that Defendants' goods and services are associated or affiliated with, or endorsed or sponsored by, Kohler, or (2) to dilute the distinctive quality of the Kohler BOLD Marks."
(Pl.'s Mot. for Default J., Exhibit 3 ¶ 3, ECF No. 13-3.) Second , Plaintiff requested that the Court order Defendants to permanently transfer to Plaintiff the MYBOLD.COM domain name and other domain names containing the word BOLD. (Id. ¶ 4.) Third , Plaintiff requested that the Court order Defendants to withdraw their trademark application and refrain from filing any confusingly similar marks. (Id. ¶ 5.) Fourth , Plaintiff requested that the Court order Defendants to destroy or deliver for destruction any material, including electronic data, bearing a mark confusingly similar to Plaintiff's marks. (Id. ¶ 6.) Fifth , Plaintiff requested that the Court order Defendants to serve a written report under oath setting forth their compliance with these requests. (Id. ¶ 7.)
As Magistrate Judge Mann correctly noted, a plaintiff seeking injunctive relief in this Circuit must satisfy the four factor test set forth in eBay Inc. v. MercExchange, L.L.C. , 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). "A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction." Id. In eBay , the Supreme Court made clear that each of these factors must be satisfied for a court to award injunctive relief and that an injunction could not automatically follow a determination of infringement. Id. at 392-93, 126 S.Ct. 1837. Ultimately, Magistrate Judge Mann found that Plaintiff failed to prove that it would suffer irreparable harm absent an injunction, and therefore Plaintiff was not entitled to equitable relief. (R & R at 737–38.) The Court agrees.
Plaintiff contends that in assessing the first eBay factor (irreparable harm), the Court should also examine the second eBay factor (whether remedies at law are inadequate). (Obj. to R & R at 6.) In other words, Plaintiff suggests that it can cure its deficiencies with respect to the first factor with proof relevant to the second factor. While the Second Circuit has indicated that a court should consider whether the "remedies available at law, such as monetary damages, are inadequate to compensate for [a plaintiff's] injury," this presumes that a plaintiff has actually provided evidence of an injury. Salinger v. Colting , 607 F.3d 68, 80 (2d Cir. 2010) (quoting eBay , 547 U.S. at 391, 126 S.Ct. 1837 ). Here, where Plaintiff has provided no evidence of injury in the first instance, the Court need not determine whether monetary damages would be sufficient to compensate Plaintiff.
Magistrate Judge Mann found "that it is just barely plausible that there is a likelihood that defendants' use of the BOLD mark will cause confusion as to the origin or sponsorship of its products" and therefore recommended that the Court enter default judgment against Defendants for trademark infringement. (R & R at 732.) Plaintiff argues that its "success on the merits alone strongly supports granting an injunction in this case." (Obj. to R & R at 3.) This argument, however, contradicts the Second Circuit's clear guidance that courts cannot simply presume irreparable harm. Rather, consistent with eBay , to establish the requisite harm, "[P]laintiff[ ] must show that ... the failure to issue an injunction would actually cause irreparable harm." Salinger v. Colting , 607 F.3d 68, 82 (2d Cir. 2010) (internal citation omitted) (emphasis added).
Plaintiff has produced evidence that it has spent considerable amounts of money marketing and advertising its products under the BOLD marks. (Robinson Decl. ¶ 8.) Plaintiff argues that the millions of dollars in annual sales resulting from these efforts "provides strong evidence of the power of the goodwill engendered in the BOLD Marks and high reputation credited to products sold under the marks." (Obj. to R & R at 4.) Even accepting this as true, however, Plaintiff has provided no evidence that its Marks' goodwill and "high reputation" have been in any way harmed by Defendants' infringement. Magistrate Judge Mann noted that in those cases where courts have found irreparable injury, the plaintiff had provided evidence that it had lost control over its reputation, lost goodwill due to the inferiority of a defendant's goods and services, or that consumers had in fact confused the defendant's products for its own. (R & R at 737–38.)
The cases cited by Plaintiff in its Objection are consistent with Magistrate Judge Mann's assessment. For example, in Barefoot Contessa Pantry, LLC v. Aqua Star (USA) Co. , the court found the necessary irreparable harm only after the plaintiff had provided "evidence of actual consumer (and retailer) confusion." No. 15-CV-1092 JMF, 2015 WL 845711, at *6 (S.D.N.Y. Feb. 26, 2015). Specifically, the plaintiff included statements from retailers describing how they had inaccurately labeled the defendant's products as the plaintiff's products and complaints from consumers who had mistakenly purchased the defendant's products. Id. at *7. Similarly, in U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc. , the plaintiff presented two separate consumer surveys of more than 800 individuals, which found that more than 25% of surveyed consumers were confused. 800 F. Supp. 2d 515, 532-33 (S.D.N.Y. 2011), aff'd , 511 F. App'x 81 (2d Cir. 2013). Plaintiff failed to provide any such evidence here.
The only specific example of harm provided by Plaintiff is the fact that Plaintiff and Defendant exhibited their goods at the same 2017 Kitchen & Bath Industry Show "in front of the same buyers." (Obj. to R & R at 5.) Notably, Plaintiff does not assert that a single one of these buyers confused Defendants' products for Plaintiff's products. (Id. ) To the extent that even one of these buyers confused Defendants' products for Plaintiff's, Plaintiff presumably would have included evidence to that effect. The fact that Plaintiff has not done so is telling. See McGregor-Doniger Inc. , 599 F.2d at 1136 ("While a plaintiff need not prove actual confusion in order to prevail, ... it is certainly proper for the trial judge to infer from the absence of actual confusion that there was also no likelihood of confusion.") (internal citations and quotations omitted). On this record, the Court finds that Plaintiff has not established irreparable harm.
Plaintiff suggests that Defendants' default prevented it from taking discovery that would have provided the evidence necessary to support this factor. (Obj. to R & R at 9-10.) Nonsense. Plaintiff's ability to conduct consumer surveys or, at the least, provide attestations from confused retailers or consumers was in no way impeded by Defendants' default. Defendants were not in unique possession of any information necessary to conduct such surveys or interviews.
Plaintiff also maintains that Magistrate Judge Mann erred in finding that the scope of Plaintiff's requested injunctive relief was overbroad, arguing that Magistrate Judge Mann should have tailored the relief rather than rejecting it outright. (Obj. to R & R at 11-14.) Because the Court finds that Plaintiff has failed to meet the first eBay factor, however, the Court need not reach this argument.
IV. Plaintiff's New York Trademark Dilution Claim
Under New York law, a plaintiff can prove trademark dilution under a dilution or tarnishment theory. Plaintiff alleged a dilution theory, which requires proof of six factors: "(i) the similarity of the marks; (ii) the similarity of the products covered; (iii) the sophistication of the consumers; (iv) the existence of predatory intent; (v) the renown of the senior mark; and (vi) the renown of the junior mark." See New York Stock Exch., Inc. v. New York, New York Hotel LLC , 293 F.3d 550, 558 (2d Cir. 2002). Notably, "New York law does not permit a dilution claim unless the marks are ‘substantially’ similar." Starbucks Corp. v. Wolfe's Borough Coffee, Inc. , 588 F.3d 97, 114 (2d Cir. 2009)
Here, Magistrate Judge Mann recommended that the dilution claim be denied based on a finding that Defendant Bold's mark was not similar enough to Plaintiff's Marks to satisfy New York law. Plaintiff objects, arguing that Defendant Bold's mark is "identical and highly similar" to its own. (Obj. to R & R at 18.)
Plaintiff's Mark: Defendant Bold's Mark:
The fact that the word BOLD appears in both marks establishes some similarity. However, some similarity is not sufficient to give rise to a dilution claim. Rather, "[t]he standard test for substantial similarity between two items is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same." Lapine v. Seinfeld , 375 F. App'x 81, 82 (2d Cir. 2010) (quoting Yurman Design, Inc. v. PAJ, Inc. , 262 F.3d 101, 111 (2d Cir. 2001) ) (alteration in original). Here, that ordinary observer would not.
The word BOLD appears alone in Defendant Bold's mark, while it is used as a modifier in conjunction with other words in Plaintiff's marks. Plaintiff asserted in its arguments that BOLD is the dominant word in its marks, and therefore Defendant Bold's mark should be considered substantially similar to Plaintiff's. (Pl.'s Mem. in Support of Default J. 13.) But Plaintiff provides nothing beyond its own ipse dixit to support the contention that BOLD is the dominant word in Plaintiff's marks. Indeed, in the mark THE BOLD LOOK OF KOHLER, the words LOOK or KOHLER could just as easily be considered dominant. C.f. Morningside Grp. Ltd. v. Morningside Capital Grp., L.L.C. , 182 F.3d 133, 140 (2d Cir. 1999) (finding that between the two marks "The Morningside Group Limited" and "Morningside Capital Group, L.L.C.," "[o]nly one word stands out as dominant in the two names"). Further, the fact that Plaintiff uses the word BOLD in multiple marks does not necessarily make it the dominant word in any individual mark.
Aside from the word BOLD appearing in both marks, there is no aesthetic similarity between the marks. As Magistrate Judge Mann found, (R & R at 722–23,) the font of Plaintiff's BOLD mark is set in narrow, crisp, angular type-face, with all capital letters. Defendant Bold's mark, however, has (literally) bold, rounded, all lower-case, and contiguous lettering. Further, Defendant Bold's mark incorporates mirrored gaps in the B and D letters, as well as a small filled circle within the O letter. Given the lack of similarity between the two marks, the Court agrees with Magistrate Judge Mann's assessment that Plaintiff's New York trademark dilution claim must be denied.
CONCLUSION
The Court has reviewed the remaining portions of the R & R for clear error and, finding none, hereby adopts Magistrate Judge Mann's R & R as the opinion of this Court, with the exception of Magistrate Judge Mann's harmless errors as to incontestability and competitive proximity. For the foregoing reasons, Plaintiff's motion for default judgment is GRANTED in part and DENIED in part. Defendants are liable for trademark infringement and false designation of origin under the Lanham Act and New York common law, except as to the BOLD mark. Plaintiff's request for equitable relief is DENIED.
SO ORDERED.
REPORT AND RECOMMENDATION
ROANNE L. MANN, CHIEF UNITED STATES MAGISTRATE JUDGE:
Plaintiff Kohler Co. ("plaintiff" or "Kohler") brings this action for trademark infringement, false designation of origin, trademark dilution, and unfair competition, seeking injunctive relief and damages pursuant to the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a) ; the New York General Business Law, N.Y. Gen. Bus. Law § 360-l (McKinney) ; and New York common law, see ITC Ltd. v. Punchgini, Inc., 9 N.Y.3d 467, 850 N.Y.S.2d 366, 880 N.E.2d 852, 857-860 (2007). See Complaint (July 17, 2017) ("Compl.") ¶ 3, Electronic Case Filing ("ECF") Docket Entry ("DE") #1. Plaintiff filed this suit on July 17, 2017, against Bold International FZCO ("Bold Int'l") and Rocell Bath Limited ("Rocell") (together, "defendants"). See id. at 1. Having failed to answer or otherwise defend this case, defendants defaulted, as noted by the Clerk of the Court on October 5, 2017. See Clerk's Entry of Default (Oct. 5, 2017) ("Entry of Default"), DE #12. Plaintiff subsequently moved for default judgment under Rule 55(b)(2) of the Federal Rules of Civil Procedure. See Motion for Default Judgment (Oct. 19, 2017), DE #13; see also Memorandum in Support (Nov. 22, 2017) ("Pl. Mem."), DE #18. On October 23, 2017, the Honorable LaShann DeArcy Hall referred plaintiff's motion to the undersigned magistrate judge for a report and recommendation. See Order (Oct. 23, 2017).
For the reasons set forth below, this Court respectfully recommends that plaintiff's motion be granted in part and denied in part. This Court concludes that, considering plaintiff's evidentiary proffer, plaintiff plausibly alleges that defendants are liable for trademark infringement and false designation of origin under the Lanham Act and New York common law, but has not plausibly alleged that defendants are liable for unfair competition or trademark dilution under New York law. This Court further concludes that plaintiff's evidentiary submissions do not support its request for equitable relief. THE UNDERLYING FACTS
I. Plaintiff and its Trademarks
Plaintiff has been marketing kitchen and bath fixtures since 1883, when it marketed its first bathtub. See Compl. ¶ 10. This bathtub featured plaintiff's "unique process for coating metal vessels with enamel[.]" Id. Further, in 1927, plaintiff "developed the ability to produce identical color on both vitreous china and cast-iron fixtures, making the coordination of bathroom collections possible." Declaration of James M. Robinson IV (Nov. 22, 2017) ("Robinson Decl.") ¶ 6, DE #20. The Metropolitan Museum of Art in New York City displayed plaintiff's unique black plumbing fixtures in 1929. See Compl. ¶ 11. Plaintiff's "[p]lumbing fixtures were [even] adapted for war housing, hospitals, and the military" during World War II, during which plaintiff also produced "torpedo tubes, shell fuses, and other military components." Id. ¶ 12.
After supporting the war efforts, plaintiff focused on household products, "in part to accommodate the millions of service personnel returning to the U.S. and purchasing homes." Id. ¶ 13. In 1965, plaintiff "introduced bathroom fixtures in vibrant colors, moving away from the pastels that had dominated the market since the 1920s." See id. ¶ 14. In order to highlight these "boldly colored products[,]" plaintiff, in 1967, began to market its products under the slogan THE BOLD LOOK OF KOHLER. See id. ¶ 15. Plaintiff also introduced its environmentally conscious "low-consumption faucets, showerheads, and toilets in 1974[,]" id. ¶ 17, and then, in 1977, "launched its first whirlpool bath line[,]" which was the first in the industry to be offered in its signature colors, id. ¶ 18. "Within two years, [plaintiff's] line of whirlpool baths became the largest in the U.S." Id.
Plaintiff has registered with the United States Patent and Trademark Office (the "USPTO") various marks featuring the word BOLD, including THE BOLD LOOK OF KOHLER, BOLD.POWER., BOLD.PERFORMANCE., BOLD.CONSERVATION., BOLD.STYLE., BOLD.DURABILITY., BOLD.EXPERIENCE., and LIVE BOLD (the "Kohler BOLD Marks"). See id. ¶¶ 22-25; see generally Ex. A. With the exception of its initial slogan (reproduced below), plaintiff began use of these marks between 2009 and 2012. See Compl. ¶ 25. These marks cover goods such as toilets, showerheads, bathtubs, sinks, and faucets. See id. [Editor's Note: The preceding image contains the reference for footnote ].
Plaintiff asserts in its Complaint that two of its marks—THE BOLD LOOK OF KOHLER and BOLD.POWER.—have gained incontestability status. See Compl. ¶ 27. As plaintiff failed to plead facts establishing the elements of 15 U.S.C. § 1065, the Court need not accept plaintiff's legal conclusion of incontestability. See Mya Saray, LLC v. Al-Amir, 831 F.Supp.2d 922, 937 (E.D. Va. 2011). Nevertheless, even assuming that incontestability is plausibly supported by the USPTO's acknowledgment of plaintiff's declaration of incontestability, see Declaration (Nov. 22, 2017) ("Default J. Decl."), Exhibit A ("Ex. A") at 3, 12, DE #19-1 ("Affidavit of Incontestability: Section 15 – Accepted"); but see Trademark Man. of Exam. Proc. § 1605 (19th ed. 2017), 2017 WL 424131 (noting that such an acknowledgment is not a determination of incontestability but is simply an acknowledgement by the USPTO that the affidavit or declaration "complies with the requirements of the statute or rules"), a finding of incontestability would not materially impact the Court's analysis, see infra pp. 721 n.12. (This opinion references the page numbers electronically imprinted by the ECF docketing system in its citation to exhibits.)
Plaintiff also alleges in its Complaint that it had successfully registered the mark BOLD.DESIGN. in connection with toilets and related goods. See Compl. ¶ 25; but see infra p. 711 n.4.
This image is the mark portion of the most recent specimen filed with the USPTO in the 1137310 registration. TSDR, Case ID 73200844, Documents - Specimen , USPTO.gov (Jul. 2, 2009), http://tsdr.uspto.gov.
At the time this lawsuit was commenced, plaintiff also had two pending federal trademark applications, for the marks BOLD and BOLD.DESIGN. See Compl. ¶¶ 28-29; see generally Default J. Decl., Exhibit B ("Ex. B"), DE #19-2. Plaintiff has yet to commence actual use of the BOLD mark. See Ex. B at 2 ("Currently Use: No"). Plaintiff began use of the mark BOLD.DESIGN. on January 31, 2010, in connection with the sale of medicine cabinets. See Compl. ¶ 29. The USPTO, however, refused to register BOLD.DESIGN. because of a likelihood of confusion with a third-party's registered mark BOLD in connection with the sale of furniture. See Ex. B at 6; TSDR, Case ID 87410910, Documents – Offc Action Outgoing , USPTO.GOV (Oct. 19, 2017), http://tsdr.uspto.gov ("BOLD.DESIGN. Refusal Letter"). In light of this refusal, on May 4, 2018 (during the pendency of this motion), plaintiff abandoned its application to register the mark BOLD.DESIGN. See id. Notice of Abandonment (May 4, 2018).
Plaintiff had earlier registered the mark BOLD.DESIGN. in connection with goods that included toilets and toilet tanks, see Compl. ¶ 25, but that registration was canceled on October 13, 2017, see USPTO, TSDR Case Viewer ("TSDR"), Case ID 77792649, Status , USPTO.gov , http://tsdr.uspto.gov (last visited on June 19, 2018); plaintiff does not now claim trademark infringement of this mark under Section 32 of the Lanham Act, 15 U.S.C. § 1114(1) (relating to the infringement of registered marks), see Pl. Mem. at 2-3.
"It is well settled that in ruling on [a motion to dismiss], a district court may consider the facts as asserted within the four corners of the complaint together with the documents attached to the complaint as exhibits, and any documents incorporated in the complaint by reference." Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010).
Plaintiff has invested in the marketing of its goods. In 1985, plaintiff "opened its 36,000 square-foot Kohler Design Center for the purpose of showcasing the dramatic design of [its] kitchen and bath fixtures." Compl. ¶ 19. "In the U.S. alone, [plaintiff] has expended in the tens of millions of dollars on the advertising and marketing of products under the [Kohler BOLD Marks] in each of the last five years." Robinson Decl. ¶ 8. "As a result of these efforts, ... [plaintiff's] sales of products sold under its BOLD trademarks has [sic] been in the hundreds of millions of dollars in annual sales in each of the last five years." Id. ¶ 9. Plaintiff sells these products to "millions of U.S. consumers from every demographic and economic background[.]" Id. ¶ 10. "As a consequence of [this] extensive advertising, promotion, and use of the Kohler BOLD Marks, [plaintiff] has developed enormous recognition for its goods and services under the marks and has acquired and enjoys a valuable reputation and tremendous goodwill under them." Compl. ¶ 23.
II. Defendants and the Purported Infringement
Bold Int'l, which was founded in 2011 in the United Arab Emirates with its headquarters in Dubai, see id. ¶¶ 5, 30, is also in the kitchen and bath fixtures market, see id. ¶ 31. In 2011, Bold Int'l attempted to register the mark BOLD (reproduced below) with the Office of Harmonization in the Internal Market—now known as the European Union Intellectual Property Office (the "EUIPO"). See id. ¶ 38. Plaintiff succeeded in partially opposing the registration of this mark on the basis that there would be a likelihood of confusion with plaintiff's pre-existing marks because of "the degree of similarity of the marks and the identity of some of the goods[.]" Id. ¶¶ 40-41. Bold Int'l's application was subsequently canceled in its entirety on June 9, 2017 because of such a likelihood of confusion. See id. ¶¶ 42-43.
In 2015, Bold Int'l again attempted to register the mark BOLD, this time with the USPTO. See id. ¶ 32. The trademark examiner refused to register this mark in March 2016 because there was a likelihood of confusion with the Kohler BOLD Marks. See id. ¶¶ 34-35; TSDR, Case ID 86809546, Documents – Offc Action Outgoing , USPTO.GOV (Mar. 7, 2016), http://tsdr.uspto.gov ("Office Action Letter"). In October 2016, after Bold Int'l responded to the trademark examiner's refusal letter, TSDR, Case ID 86809546, Documents – Response to Office Action , USPTO.GOV (Sept. 7, 2016), http://tsdr.uspto.gov ("Response to Office Action"), the trademark examiner suspended prosecution, see Compl. ¶ 36; TSDR, Case ID 86809546, Documents – Suspension Letter , USPTO.GOV (Oct. 3, 2016), http://tsdr.uspto.gov ("Suspension Letter"). The examiner reasoned that "the applied-for mark merely co-opts a key feature of [plaintiff's] marks, namely, the word ‘BOLD,’ while omitting any additional wording." Suspension Letter at 1. Moreover, the examiner noted that plaintiff is the "single entity [that] owns all registrations for marks featuring the word ‘BOLD’ for goods substantially related, if not identical, to" those sold by Bold Int'l. Id. at 2.
In early 2016, Rocell began distributing Bold Int'l's BOLD-branded goods. See Compl. ¶¶ 47-49. Rocell's principal, Ajith K V Don John, is an employee of Bold Int'l. See id. ¶¶ 2, 50-51. Rocell maintains a supply of BOLD footwashers in the U.S. in its Briarwood, New York warehouse, selling those footwashers on Amazon.com, while also marketing BOLD footwashers and faucets on its website, rocellbath.com. See id. ¶¶ 47-48, 52-53. Further, Bold Int'l, which maintains a website at mybold.com, displayed its various bathroom fixtures under the BOLD mark at the 2017 Kitchen & Bath Industry Show in Orlando, Florida, where plaintiff was also marketing its own goods. See id. ¶¶ 31, 44-46.
Plaintiff does not sell footwashers. See Robinson Decl. ¶ 12.
PROCEDURAL POSTURE
Following the 2017 trade show, plaintiff sent a cease-and-desist letter to the attorney of record listed in the USPTO as representing Bold Int'l, to which Bold Int'l did not respond. See Compl. ¶ 54; Declaration of Angela S. Kalsi (Nov. 22, 2017) ¶ 7, DE #19; Exhibit E (Nov. 22, 2013), DE #19-5 at 2. Defendants did not stop their use of the BOLD mark. See Compl. ¶ 55. As a result, plaintiff commenced this lawsuit against defendants. See id. ¶ 1. Plaintiff claims to have effected service of the Complaint on Rocell and Bold Int'l on August 11 and 24, 2017, respectively. See Summons (Aug. 15, 2017), DE #6; Summons (Aug. 25, 2017), DE #8; Affidavit (Apr. 6, 2018) ("Amended Aff."), DE #30. Having failed to answer or otherwise defend this case, defendants defaulted, and the Clerk of Court noted their default on October 5, 2017. See Entry of Default. Plaintiff subsequently moved for default judgment, seeking equitable relief and abandoning its demand for damages. See generally Pl. Mem.; Motion for Default Judgment, Exhibit 3 ("Proposed Judgment") ¶¶ 3-9, DE #13-3.
In an order issued on November 9, 2017, this Court noted the deficiencies in plaintiff's initial motion papers and directed plaintiff to file a memorandum of law and evidentiary submissions to establish its entitlement to the relief sought. See Scheduling Order (Nov. 9, 2017) ("Scheduling Order"), DE #14. Plaintiff attempted to serve its motion for default judgment and its supporting materials on defendants on November 22, 2017. See Certificate of Service (Dec. 15, 2017) ("Rocell Service") ¶ 3, DE #22; Certificate of Service (Dec. 21, 2017) ("Bold Int'l Service") ¶ 3, DE #23. "[T]he documents that were served" on defendants were returned to plaintiff's attorney "marked with the designation, ‘RETURN TO SENDER’ " and with the "wrapper enclosing the documents ... open ..., making it appear that [defendants] received the documents ..., reviewed them, and rescinded acceptance thereof." Rocell Service ¶ 4; Bold Int'l Service ¶ 4. Defendants never responded to this Court's Order "to show cause, in writing, ... why the relief requested in plaintiff's motion papers ... should not be granted." Scheduling Order.
DEFAULT JUDGMENT STANDARD
Where the "plaintiff's claim is [not] for a sum certain[,]" the plaintiff seeking default judgment against a defendant who failed to answer or otherwise defend the case "must apply to the court" after "the clerk enter[s] the [defendant's] default." Fed. R. Civ. P. 55(a)-(b). "Even where the Clerk of the Court has entered the defendant's default, ‘[the] court may appropriately review the adequacy of service before entering a default judgment.’ " Trustees of Empire State Carpenters Annuity, Apprenticeship, Labor-Mgmt. Cooperation, Pension & Welfare Funds v. R. Baker & Son All Indus., No. 13-CV-4590(JS)(GRB), 2014 WL 4536911, at *3 (E.D.N.Y. Sept. 11, 2014) (collecting cases).
A defendant's "default is deemed to constitute a concession of all well pleaded allegations of liability[.]" Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992). The court need not, however, "agree that the alleged facts constitute a valid cause of action[.]" TAGC Mgmt., LLC v. Lehman, Lee & Xu Ltd., 536 F.App'x 45, 46 (2d Cir. 2013) (internal quotation marks and citations omitted). Indeed, "before a district court enters a default judgment, it must determine whether the allegations in a complaint establish the defendant's liability as a matter of law." Taizhou Zhongneng Imp. & Exp. Co., Ltd. v. Koutsobinas, 509 F.App'x 54, 56 (2d Cir. 2013) (citing Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009) ). To the extent that the plaintiff's allegations are inadequate, "a district court has discretion under Rule 55(b)(2) ... to require proof of necessary facts" to satisfy itself that there is "a valid cause of action[.]" Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61, 65 (2d Cir. 1981) ; accord Finkel, 577 F.3d at 87. "When deciding a [defendant's liability on a] motion for default judgment, courts have ... looked to recent precedent with regard to surviving a Rule 12(b)(6) motion to dismiss[.]" Chanel, Inc. v. Louis, No. 06-cv-5924 (ARR)(JO), 2009 WL 4639674, at *3 (E.D.N.Y. Dec. 7, 2009). On a Rule 12(b)(6) motion, courts follow a two-prong approach. See Ashcroft v. Iqbal, 556 U.S. 662, 677-80, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). First, the complaint's conclusions of law and formulaic recitations of elements of a cause of action should be disregarded. See id. Second, where the complaint contains "well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief." Id. at 679, 129 S.Ct. 1937. A "claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. at 678, 129 S.Ct. 1937 (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). While "[t]he plausibility standard is not akin to a ‘probability requirement,’ ... it asks for more than a sheer possibility that a defendant has acted unlawfully." Id. (citing Twombly, 550 U.S. at 556, 127 S.Ct. 1955 ). For mixed questions of law and fact, the inquiry is whether the plaintiff sufficiently alleged underlying facts to plausibly support its conclusions of law. See, e.g., Cintas Corp. v. Unite Here, 355 F.App'x 508, 510 (2d Cir. 2009) (affirming, in a trademark infringement action, the district court's holding that the plaintiff failed to plead sufficient facts supporting the plausibility of a likelihood of confusion). The Supreme Court has invited courts, in assessing the sufficiency of pleadings, to use their "judicial experience and common sense." Iqbal, 556 U.S. at 679, 129 S.Ct. 1937.
Accordingly, in upholding a district court's refusal to vacate a default judgment, the Second Circuit has observed that a finding of liability on default may be based on "the factual allegations in the complaint, combined with uncontroverted documentary evidence submitted by plaintiffs...." Bricklayers & Allied Craftworkers Local 2 v. Moulton Masonry & Constr., LLC, 779 F.3d 182, 189 (2d Cir. 2015) ; see id. at 188 ; Herrera v. Tri-State Kitchen & Bath, Inc., No. 14-CV-1695 (ARR)(MDG), 2015 WL 1529653, at *5 n.1 (E.D.N.Y. Mar. 31, 2015).
Although, in deciding motions for default judgment, courts assume the truth of the pleadings' well-pled facts as they relate to liability, the facts alleged in the pleadings are not assumed to be true in assessing plaintiffs' right to the relief requested. See Au Bon Pain, 653 F.2d at 65. In other words, even if the defendant is found to be liable, the defendant's default is not considered an admission of the plaintiff's entitlement to an award of damages or requested injunction. See Greyhound Exhibitgroup, 973 F.2d at 158 ; S.E.C. v. Mgmt. Dynamics, Inc., 515 F.2d 801, 814 (2d Cir. 1975) (holding that a district court must, after finding a defendant in default, make factual findings regarding the appropriateness of injunctive relief). Instead, the relief requested must "be established by the plaintiff" with evidence, Greyhound Exhibitgroup, 973 F.2d at 158, and may not exceed "what is specified in the [complaint's] ‘demand for judgment,’ " Silge v. Merz, 510 F.3d 157, 160 (2d Cir. 2007). In this regard, the court may rely on "detailed affidavits and documentary evidence" and need not conduct an evidentiary hearing on the appropriateness of the relief requested. See Fustok v. ContiCommodity Servs., Inc., 873 F.2d 38, 39-40 (2d Cir. 1989).
DISCUSSION
I. Plaintiff Has Sufficiently Shown Proper Service of Process on Defendants
Service of process may be made upon a corporation by delivering, in a judicial district of the United States, "a copy of the summons and of the complaint to an officer, a managing or general agent, or any other agent authorized by appointment or by law to receive service." Fed. R. Civ. P. 4(h)(1)(B). Where a person holds him/herself out to be such a person, and the circumstances objectively support a reasonable inference that the defendant would receive fair notice, the service should be sustained. See Cooney v. Barry Sch. of Law, 994 F.Supp.2d 268, 270 (E.D.N.Y. 2014) ( N.Y. C.P.L.R. § 311 and Rule 4(h)(1)(B) should be construed "in pari materia "); Fashion Page, Ltd. v. Zurich Ins. Co., 50 N.Y.2d 265, 271-74, 428 N.Y.S.2d 890, 406 N.E.2d 747 (1980) (holding that, under C.P.L.R. § 311, a plaintiff may rely on "corporate employees to identify the proper person to accept service" and that service on the secretary for the defendant's vice president, who had held herself out as authorized to receive service, was sufficient to support proper service on the corporation); see also Matter of DeMeo v. City of Albany, 63 A.D.3d 1272, 1273, 879 N.Y.S.2d 840 (3d Dep't 2009) (same result where employee self-identified as the "manager").
Here, plaintiff proffers its domestic process server's sworn statement that he delivered the Summons and Complaint to Ajith Tilakasiri KV Don John ("Mr. John") at Rocell's New York offices. See generally Summons (Aug. 15, 2017), DE #6; Summons (Aug. 15, 2017), DE #7; Summons (Aug. 25, 2017), DE #8; Amended Aff. Mr. John held himself out to be the principal of Rocell and employee of Bold Int'l. See Declaration (Apr. 6, 2018) ¶¶ 12, 15, DE #29. According to Bold Int'l, the company only has one U.S. distributor, which is located in New York. See id. ¶¶ 9-10. Mr. John told plaintiff that Rocell was Bold Int'l's only U.S. distributor, and that Rocell keeps an inventory of Bold Int'l's foot washers in its facility in New York. See id. ¶¶ 12-14. Moreover, Mr. John represented that he was authorized to receive service documents on behalf of both defendants. See generally Amended Aff. Accordingly, plaintiff has, on this uncontested motion for default judgment, sufficiently shown proper service on both defendants under Rule 4(h)(1)(B).
It is also very likely that plaintiff properly served defendants according to New York law, see Fed. R. Civ. P. 4(h)(1)(A), and properly served Bold Int'l according to United Arab Emirates law, see Fed. R. Civ. P. 4(h)(2), 4(f)(2)(A). See Response To Order To Show Cause (Apr. 6, 2018) at 1-10, DE #27; see generally Declaration (Apr. 6, 2018), DE #28 & attached exhibits. Regardless, defendants have failed to appear, let alone argue, that service here was improper. See De Curtis v. Ferrandina, 529 F.App'x 85, 86 (2d Cir. 2013) ("A process server's sworn statement of service creates a presumption that service has been effectuated.") (citation omitted); Burda Media, Inc. v. Viertel, 417 F.3d 292, 299 (2d Cir. 2005) ("[W]here the defaulting defendant had actual notice of the original proceeding but delayed in bringing" a motion to vacate default judgment for improper service of process, "the defendant bears the burden of proof to establish that the purported service did not occur.").
II. Plaintiff Plausibly Alleges That Defendants Are Liable for Federal Trademark Infringement
Plaintiff asserts a claim for trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). See Compl. ¶¶ 3, 62-75; Pl. Mem. at 11-16. Section 32(1) provides that
any 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). Accordingly, in order to establish a defendant's liability for trademark infringement under this section, the plaintiff must, in relevant part, show that (1) the plaintiff registered its mark, (2) and the defendant, without the plaintiff's consent, (3) "used in commerce" (4) a reproduction of the plaintiff's mark "in connection with" the sale, distribution, or advertisement of a good, (5) where such use was likely to cause confusion. See Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993).
Here, per the Complaint's well-pled and uncontested allegations and plaintiff's evidentiary proffer, it is plausible that defendants are liable for trademark infringement. First, plaintiff alleges, and attaches exhibits supporting, that it successfully registered the Kohler BOLD Marks with the USPTO. See Compl. ¶¶ 22-25; see generally Ex. A; see also Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016) (noting that registration creates a presumption of the registrant's ownership of a valid mark). Second, plaintiff alleges that it did not consent to defendants' use. See Compl. ¶ 68; cf. Gruner, 991 F.2d at 1075 (noting that the plaintiff's lack of consent was not genuinely in dispute). Indeed, plaintiff alleges that it has opposed defendants' registration of the BOLD mark in Europe and in the U.S. See Compl. ¶¶ 32-43. Plaintiff also sent a cease-and-desist letter to Bold Int'l. See id. ¶¶ 54-55.
See supra p. 713 & n.7.
Plaintiff's unregistered marks, BOLD and BOLD.DESIGN., are not asserted under this Section 32 claim.
Plaintiff also pleads facts supporting the third and fourth elements of trademark infringement. The Complaint plausibly alleges that, in 2017, Bold Int'l advertised its toilets, shower systems, sinks, faucets, and showerheads under the BOLD mark in Orlando, Florida. See Compl. ¶¶ 44-46 (alleging that Bold Int'l "displayed" such goods at the 2017 Kitchen & Bath Industry Show). The pleading also alleges that Rocell, whose principal is an employee of Bold Int'l, has been selling certain goods in the U.S. under the BOLD mark on behalf of Bold Int'l. See id. ¶¶ 48-53. According to the Complaint, Rocell has been distributing BOLD footwashers out of its Briarwood, New York warehouse, selling them on Amazon.com, and advertising BOLD "footwashers and faucets on its website at rocellbath.com." See id. ¶¶ 48-49, 52-53. These factual allegations thus support that each defendant "used in commerce" the BOLD mark "in connection with" the sale, distribution, or advertisement of goods. See United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86, 92 (2d Cir. 1997) (holding that the Lanham Act's reference to "use in commerce" extends to all activities within the scope of the Constitution's commerce clause); Jae Enters., Inc. v. Oxgord Inc., CIVIL ACTION NO. 5:15-CV-228-TBR, 2016 WL 319877, at *4–5 (W.D. Ky. Jan. 25, 2016) (offering to sell goods on Amazon.com, with the mark displayed on the details page, establishes the "use in commerce" and "in connection with" elements); accord Planned Parenthood Fed'n of Am., Inc. v. Bucci, No. 97 Civ. 0629 (KMW), 1997 WL 133313, at *3 (S.D.N.Y. Mar. 24, 1997) (discussing use on the internet generally), aff'd, 152 F.3d 920 (2d Cir. 1998). With respect to the fifth and final element, plaintiff pleads facts and proffers evidence supporting the plausibility that defendants' use of the BOLD mark is likely to cause consumer confusion as to whether plaintiff is the source or sponsor of defendants' goods. In addressing this element,
courts in the Second Circuit apply the eight factors set forth in [ Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) ]:
(1) the strength of plaintiff's mark;
(2) the similarity of the parties' marks;
(3) the proximity of the parties' products in the marketplace;
(4) the likelihood that the plaintiff will "bridge the gap" between the products;
(5) actual consumer confusion between the two marks;
(6) the defendant's intent in adopting its mark;
(7) the quality of the defendant's product; and
(8) the sophistication of the relevant consumer group.
Playtex Prods., Inc. v. Georgia Pacific Corp., 390 F.3d 158, 162 (2d Cir. 2004) (citations omitted) (Sotomayor, J.), superseded by statute on other grounds as recognized in Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 107 (2d Cir. 2009). The proper balancing of these factors is a question of law, in which no single factor is dispositive. See id. The Polaroid factors are meant to aid the court's assessment of whether the use of a given mark will likely cause confusion, and should not be applied in a "mechanical process by which the party with the greatest number of factors wins." Id.
The lengthy discussion that follows addresses in turn each of the Polaroid factors, many aspects of which are not addressed by plaintiff. See generally Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 579-80 (2d Cir. 2005) (collecting cases and reaffirming the general rule that district courts must make findings as to each factor).
A. Strength of Plaintiff's Marks
With respect to the first factor, plaintiff pleads facts and proffers evidence supporting that its Kohler BOLD Marks are of barely moderate strength.
A mark's strength is measured by its degree of distinctiveness. See McGregor–Doniger, Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir. 1979), superseded by rule on other grounds as recognized by Bristol–Myers Squibb Co. v. McNeil–P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992). Distinctiveness is a mark's "tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source." Id. Courts assess two aspects of a mark's distinctiveness: its inherent distinctiveness, and its distinctiveness in the marketplace. See W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993) (citing McGregor–Doniger, 599 F.2d at 1131-33 ).
1. Inherent Distinctiveness
Plaintiff pleads facts supporting that the inherent distinctiveness of its marks falls between weak and moderate in strength.
A mark's inherent distinctiveness is determined by reference to an ascending scale: generic, descriptive, suggestive, and arbitrary/fanciful. See id. (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) ). A generic mark is one that refers "to the genus of which the particular product is a species[.]" Abercrombie, 537 F.2d at 9. Because such marks are the common name for the goods that they cover, consumers do not view them as source designators. See id. As such, generic marks are incapable of being distinctive and thus are not protectable and have no strength. See id.
A descriptive mark is one that directly describes the goods with which it is associated, see Bristol-Myers Squibb, 973 F.2d at 1040 ; it "forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods[,]" Abercrombie, 537 F.2d at 11 (quotation omitted). A descriptive mark is not immediately distinctive. See Guthrie Healthcare Sys., 826 F.3d at 41. To be protectable, it must acquire distinctiveness, also known as secondary meaning. See id. Secondary meaning is defined by a mark's distinctiveness in the marketplace, discussed below. See id.; see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766 n.4, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (" ‘To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.’ " (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) )). Because a descriptive mark's distinctiveness (as well as its validity) is dependent upon external market forces, it is, at best, an inherently weak mark. See Guthrie Healthcare Sys., 826 F.3d at 41.
Like a descriptive mark, a suggestive mark describes the products with which it is associated. See Abercrombie, 537 F.2d at 10-11. A suggestive mark, however, does so indirectly, see Bristol-Myers Squibb, 973 F.2d at 1040 ("The issue, therefore, is whether the connection between ‘PM’ and a nighttime sleep aid is direct enough that the term may be categorized as descriptive or whether the connection is more indirect, requiring categorization as suggestive."); a suggestive mark requires the consumer to use "imagination, thought and perception to reach a conclusion as to the nature of goods[,]" Abercrombie, 537 F.2d at 11 (quotation omitted). In contrast to a descriptive mark, a suggestive mark does not require proof of secondary meaning to gain trademark protection. See id. Nevertheless, in light of its descriptive qualities, a suggestive mark is, at best, of moderate inherent strength. See Guthrie Healthcare Sys., 826 F.3d at 41.
A fanciful mark is one that has no meaning in and of itself, such as a coined term. See Abercrombie, 537 F.2d at 11 n.12. An arbitrary mark is one that has meaning but does not describe the goods with which it is associated. See id. Arbitrary and fanciful marks are immediately distinctive: consumers instantly recognize those marks as source designators because there is no other apparent purpose for their use in connection with the sale of that good. See Guthrie Healthcare Sys., 826 F.3d at 41. These kinds of marks thus have the greatest inherent strength. See id.
Here, plaintiff pleads facts supporting that its Kohler BOLD Marks are barely suggestive of its goods. These marks cover goods in the kitchen and bath fixtures market, such as toilets and faucets. See Compl. ¶ 25. As none of these marks refer to the common name of such products, they are not generic marks. As they have meaning, they are not fanciful marks. Nor are these marks arbitrary. These marks describe the goods with which they are associated. THE BOLD LOOK OF KOHLER, for example, is, according to the Complaint, descriptive of plaintiff's "boldly colored products." Id. ¶ 15; see also id. ¶¶ 10, 12-18 (discussing the development of colors of plaintiff's goods); Robinson Decl. ¶ 6 (same). Plaintiff extended its use of the adjective-based BOLD motif to describe other aspects of its products beyond their "LOOK." By way of example, in describing its toilet's "360° OF EXTRAORDINARY FLUSHING POWER[,]" plaintiff uses the mark BOLD.POWER. See TSDR, Case ID 77792667, Documents – Specimen , USPTO.GOV (Jul. 29, 2016), http://tsdr.uspto.gov. Similar examples include the BOLD.DURABILITY. of plaintiff's "GUARANTEED NOT TO CHIP, CRACK, OR BURN" sinks. See TSDR, Case ID 77829186, Documents – Specimen , USPTO.GOV (Oct. 19, 2017), http://tsdr.uspto.gov.
Whether the Kohler BOLD Marks are indirectly or directly descriptive of plaintiff's products presents a close question. The descriptive quality of plaintiff's Kohler BOLD Marks is more than indirect: unlike most suggestive marks, the use of the word BOLD as part of a mark describing aspects of plaintiff's goods—such as their chip-resistant DURABILITY—requires only a minimal degree of imagination to understand how they are describing plaintiff's showerheads, toilets, and faucets. See Abercrombie, 537 F.2d at 11 (noting the imagination test). This stands in contrast to, for example, the use of the word GREYHOUND (a fast dog) to indirectly describe a fast bus. See 2 McCarthy on Trademarks and Unfair Competition (" McCarthy") § 11:67 (5th ed. 2018) ("[T]o receive any information about the nature of bus services from the word ‘greyhound’ one must know what a ‘greyhound’ is and what its attributes are before the mind can make any connection between the word and any alleged characteristics of a bus service.").
On the other hand, it cannot fairly be said that the various Kohler BOLD Marks are directly descriptive of plaintiff's goods. The use of the adjective BOLD in conjunction with nouns like PERFORMANCE and POWER is, unlike most descriptive marks, not obviously associated with kitchen and bath fixtures, thereby requiring the consumer to engage in some meaningful degree of imagination to understand how the term is describing plaintiff's goods. See generally PaperCutter, Inc. v. Fay's Drug Co., 900 F.2d 558, 564 (2d Cir. 1990) (discussing the context of the paper cutting industry, in holding that consumers would view the mark PAPERCUTTER as being directly associated with the mark's "product or business"); Cross Commerce Media, Inc. v. Collective, Inc., 841 F.3d 155, 165-66 (2d Cir. 2016) ("[A] mark is more likely to be suggestive, rather than descriptive, if its meaning evokes a wide range of products." (citing Playtex Prods., 390 F.3d at 164 )). Plaintiff's use of the word BOLD is a far cry from, for example, the use of the word CRUNCHY to directly describe crunchy candy bars. See TCPIP Holding Co. v. Haar Commc'ns, Inc., 244 F.3d 88, 101 (2d Cir. 2001).
As illustrated above, the traditional imagination test is unhelpful in determining the inherent distinctiveness of plaintiff's Kohler BOLD Marks. In such circumstances, the Second Circuit has recognized the utility of other tests. See Cross Commerce Media, 841 F.3d at 165-66. "[A] mark is more likely to be descriptive, rather than suggestive, if ‘[a]ccording [it] trademark exclusivity ... would inhibit competitors from using descriptions of their competing products.’ " Id. at 165 (collecting cases). "Information about how rival third parties have used a mark could be instructive in" determining whether a mark is descriptive or suggestive. Id. "Consistent usage by competitors might indicate that it is a vital descriptive tool in the industry, while minimal usage might suggest the contrary." Id.
It is likely that businesses in the kitchen and bath fixtures industry may have a meaningful need to use nouns like CONSERVATION, POWER, PERFORMANCE, LOOK, and DURABILITY in connection with the sale of their goods. It is less likely that such businesses would need to use words like LIVE and EXPERIENCE. It is even less likely that they would need to qualify those descriptors as being BOLD, as plaintiff's marks do. Moreover, a review of the USPTO online database confirms that plaintiff is the only entity that has a federally registered trademark predominately featuring the word BOLD in connection with the sale of toilets, faucets, and the like. See Office Action Letter at 2; compare with Bristol-Myers Squibb, 973 F.2d at 1040-41 (affirming the magistrate judge's finding that the mark PM is descriptive of nighttime drugs because, even though a consumer must engage in some meaningful, though still minimal, degree of logical thinking to understand this description, "several [other] nighttime products were sold using some variant of ‘PM’ ").
Therefore, on balance, plaintiff may, on default judgment, plausibly claim that its Kohler BOLD Marks are suggestive, but just barely so, indicating that they are of between weak and moderate inherent strength. See McGregor-Doniger, 599 F.2d at 1131-32 (discussing the fluidity between the degrees of trademark strength and affirming that the plaintiff's mark DRIZZLER in connection with raincoats was a suggestive mark, but just barely over the line from a descriptive mark); Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 385-86 (2d Cir. 2005) (noting that suggestive marks are at best of moderate inherent strength and finding that the plaintiff's mark for its orange-flavored vodka, which included the words ORANGE FLAVORED and the letter O in the shape of an orange slice, was "suggestive, but just barely"). Setting aside the possibly formalistic analysis that is the Abercrombie scale, this finding is consistent with the intrinsic impression of the Kohler BOLD Marks' distinctiveness: they seem to be functioning as trademarks—designating the source of goods—and yet, at the same time, seem to be but colorful descriptions of goods. See, e.g., Guthrie Healthcare Sys., 826 F.3d at 41-43 (setting aside the strict Abercrombie scale and discussing the mark's intrinsic impression of distinctiveness); Estee Lauder Inc. v. Gap, Inc., 108 F.3d 1503, 1509-10 (2d Cir. 1997) (upholding as not clearly erroneous the district court's finding that the mark "100%," both alone and in combination with the phrase "time release moisturizer," was a suggestive mark); see also, e.g., TSDR, Case ID 77792661, Documents – Specimen , USPTO.GOV (May 18, 2017), http://tsdr.uspto.gov; TSDR, Case ID 77829186, Documents – Specimen , USPTO.GOV (Aug. 30, 2011), http://tsdr.uspto.gov.
Notably, plaintiff does not resist this finding. Plaintiff completely failed to address the Abercrombie scale in either its initial motion papers, see Motion for Default Judgment (Oct. 19, 2017) at 1-3, DE #13, or, after this Court noted their general deficiency, see Scheduling Order, its supplemental motion papers, see Pl. Mem. at 12-13.
2. Distinctiveness in the Marketplace
Plaintiff proffers evidence supporting that its marks' distinctiveness in the marketplace is of moderate strength.
"Courts may consider several factors in determining a particular mark's distinctiveness in the marketplace." Banfi Prods. Corp. v. Kendall-Jackson Winery, Ltd., 74 F.Supp.2d 188, 196 (E.D.N.Y. 1999). For example, courts consider "the extent of advertising invested in" the mark and "the volume of sales" of its associated product. Id. (internal quotation marks and citations omitted). Courts also consider other indicia of secondary meaning, such as how long the plaintiff has used the mark. See Nature's Best, Inc. v. Ultimate Nutrition, Inc., 323 F.Supp.2d 429, 432 (E.D.N.Y. 2004)
Although plaintiff began selling bathroom fixtures in 1883, see Compl. ¶ 10, it did not begin selling goods under THE BOLD LOOK OF KOHLER mark until 1967, see id. ¶ 15. Moreover, plaintiff did not begin using any of the other Kohler BOLD Marks until less than ten years ago. See id. ¶ 25. The Complaint fails to plead facts otherwise relevant to this factor. Plaintiff does proffer evidence that, over each of the last five years, plaintiff has, in the U.S., "expended in the tens of millions of dollars on the advertising and marketing of products under the" Kohler BOLD Marks. Robinson Decl. ¶ 8. As a result, plaintiff has sold these products to "millions of U.S. consumers from every demographic and economic background," generating "hundreds of millions of dollars" in sales per year. Id. ¶¶ 9-10.
Plaintiff does not, however, particularize its marketing expenditures for each of its various marks, nor does it show how the aggregate figures compare to its relevant market. See Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 123 (2d Cir. 2001) (noting that "[e]ven an inherently distinctive mark can, in its commercial context, lack strength as a mark[,]" and holding that, "[i]n light of its ... low level of commercial success and small advertising budget relative to market competitors at the relevant time, ... [plaintiff] possessed a weak mark" (emphasis added)). Nevertheless, given plaintiff's lengthy and uncontested industry reputation, see Compl. ¶¶ 10-23, its advertising and sales figures support a plausible claim that its Kohler BOLD Marks command at least moderate strength in the marketplace.
If plaintiff is investing, for example, in excess of $10 million in advertisements while all of its competitors are investing far more, one may infer that plaintiff's marks are being overshadowed in the market.
3. Aggregate Assessment of the Strength of Plaintiff's Marks
In light of the Kohler BOLD Marks' barely moderate inherent strength and at least moderate strength in the marketplace, this Court concludes that plaintiff's marks are, for purposes of this motion, barely moderately strong. See W.W.W. Pharm., 984 F.2d at 573 (affirming that the plaintiff's registered SPORTSTICK mark was only moderately strong where its inherent distinctiveness was moderate and, as noted in the district court's opinion, its distinctiveness in the marketplace was "not high").
Plaintiff asserts that two of its marks are incontestable, see Compl. ¶ 27; Pl. Mem. at 3, 12—an assertion that may or may not be adequately pled, see supra p. 710 n.2. In any event, there is a split in authority as to whether incontestable marks are conclusively strong not only for protectability purposes but also for purposes of a Polaroid likelihood-of-confusion analysis. See McCarthy §§ 32:154, 32:155 (discussing circuit split). The Second Circuit treats incontestability as conclusive on the issue of protectability and as a factor to be considered in a Polaroid analysis, in determining whether the mark is strong enough to weigh in favor of a finding of likelihood of confusion. See Gruner, 991 F.2d at 1076-78 ; The Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 960-61 & n.1 (2d Cir. 1996). Thus, a mark may be relatively strong (i.e., sufficiently distinctive) for protectability purposes and still be relatively weak (i.e., only minimally distinctive) for infringement purposes. See Gruner, 991 F.2d at 1075-78 ; Montblanc-Simplo v. Aurora Due S.r.L., 363 F.Supp.2d 467, 478-81 (E.D.N.Y. 2005) ("[T]he Court concludes that, while the three-ring decoband is an incontestably valid mark, it is a relatively weak mark."); see also Arrow Fastener, 59 F.3d at 391 ; Nature's Best, 323 F.Supp.2d at 432 ("[T]here is a distinction between the protectablility of a suggestive mark and the mark's strength in the related but discrete context of an action for infringement." (internal quotation and quotation marks omitted)).
B. Similarity of the Marks
The facts pled in the Complaint support that the parties' marks are, at best, of moderate similarity. "In assessing similarity, courts look to the overall impression created by the [marks] and the context in which they are found[,] and consider the totality of factors that could cause confusion among prospective purchasers." Gruner, 991 F.2d at 1078. In doing so, courts consider aspects such as "the products' sizes, logos, typefaces, and package designs." W.W.W. Pharm., 984 F.2d at 573.
Here, the marks are textually somewhat similar, but otherwise quite dissimilar. As an initial matter, plaintiff fails to plead facts or otherwise proffer evidence relating to the context in which defendants' marks are found in the market. See generally id. (framing the similarity analysis in terms of how the marks are actually presented in the market); Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46-48 (2d Cir. 2000) (same). There is thus no basis for the Court to infer that the marks are presented to consumers in any sort of similar fashion.
Further, the marks are, visually speaking, quite dissimilar. The Kohler BOLD Marks' specimens filed with the USPTO feature fonts that are crisp and clean. By contrast, the font of defendant's mark appears in letters that are rounded, contiguous, and, in the case of the B and D—which, unlike plaintiff's, are mirror images of one another—are incomplete, with unusual gaps in the rendering of those letters. Whereas plaintiff's marks incorporate both upper- and lower-case letters (and, in some cases, all-caps), defendants' mark consists of all lower-case letters. Defendants' mark also features an unusual dot in the center of the O, giving it the appearance of a bullseye, which further distinguishes it from plaintiff's marks' more formal, yet still accessible, appearance. Finally, most of plaintiff's marks use periods after each word (e.g., BOLD. PERFORMANCE.), whereas defendants' mark does not include any punctuation. The only notable visual similarities are that the words in the parties' marks are, for the most part, flush top to bottom and legible.
Nevertheless, the marks do have a meaningful degree of textual similarity, in that both parties' marks use the word BOLD. The word BOLD is generally the first word in plaintiff's marks – a factor that has been held, in some circumstances, to lend greater weight to its commercial impression. See Mr. Travel, Inc. v. V. I. P. Travel Service, Inc., 268 F.Supp. 958, 962 (N.D. Ill. 1966) (discussing and rejecting a categorical "first part is dominant" rule) (collecting cases), aff'd, 385 F.2d 420 (7th Cir. 1967) ; see also Magazine Publishers v. Ziff-Davis Pub. Co., 147 F.2d 182, 185 (2d Cir. 1945). The significance of the word BOLD in plaintiff's marks is, however, offset to some extent because it is almost always used as an adjective. See Kohler Co. v. Kohler Homes, et al., Opposition No. 91152287, 2008 WL 4877069, at *1 (T.T.A.B. Nov. 4, 2008) (finding that the dominant component of plaintiff's mark THE BOLD LOOK OF KOHLER was KOHLER, not BOLD, because BOLD LOOK describes the word KOHLER, thereby drawing the consumer's mind to the target word KOHLER). A consumer viewing or hearing the mark BOLD.CONSERVATION., for example, will likely place as much or more emphasis on the target noun CONSERVATION, as opposed to its adjective BOLD.
Plaintiff claims that, because the word BOLD is the dominant component of its marks, its use in defendants' mark will likely cause confusion. See Pl. Mem. at 13. Plaintiff does not, however, explain how the word BOLD is its marks' dominant component; plaintiff simply assumes that it is. See id. To the extent that plaintiff purports to rely on some categorical rule, such as the "first part is dominant" rule, that reliance is misplaced: courts have rejected such broad generalizations as being detached from actual market impressions. See Glenmore Distilleries Co. v. National Distillers Prods. Corp., 101 F.2d 479, 479 (4th Cir. 1939) ("It is impossible to lay down a general rule that either word in an established trade mark of two words is of such importance that its use in other combinations on the same kind of goods would constitute infringement."); accord Magazine Publishers, 147 F.2d at 185. Simply put, courts in this Circuit analyze similarities using a totality of the circumstances approach, not a mechanical, rigid one. See Gruner, 991 F.2d at 1078 ("courts look to the overall impression created by the" marks).
In fact, the overall visual impression created by the mark THE BOLD LOOK OF KOHLER is that the term KOHLER, which appears in larger, darker, thicker letters, is the dominant term.
A court, presented with numerous marks, each featuring the same word, might be inclined to evaluate that similarity based on a legal brief and lend it dispositive weight. One might easily fall into that trap when bombarded with the word BOLD upon reading the list of the Kohler BOLD Marks in plaintiff's Complaint and brief, which present the word BOLD as an overwhelmingly dominant component: THE BOLD LOOK OF KOHLER, BOLD. PERFORMANCE., BOLD.POWER., BOLD.CONSERVATION., BOLD.STYLE., BOLD.DURABILITY., LIVE BOLD and BOLD.EXPERIENCE. See Compl. ¶¶ 22-25; Pl. Mem. at 2-3. Consumers do not, however, derive impressions from trademarks via legal briefs and pleadings, as courts do. Consumers interact with trademarks in the market. Thus, to the extent consumers will lend a mark's given component more weight because of its similarities to components in other marks from the same source, the inquiry must be supported with facts from the marketplace, not simply from the marks themselves.
The Second Circuit has recognized a theory arising out of this market-based phenomenon: a family of marks. See Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 394 (2d Cir. 1995) (citing J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1462-63 (Fed. Cir. 1991) ). However, despite numerous, conclusory references to its "family of marks," see Compl. ¶ 1; Pl. Mem. at 1-2, 4, 18; Robinson Decl. ¶ 8, plaintiff does not plead or otherwise proffer facts—or even advance a legal argument—to plausibly allege that the Kohler BOLD Marks are a family for which BOLD is its formative. Conferring plaintiff's marks with the benefits of a trademark family without the requisite evidentiary showing would circumvent the strictures of this theory. See generally Victoria's Secret, 2009 WL 959775. As such, the Court's analysis need not—and will not—take into account plaintiff's reference to its purported family of marks.
"A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner." J & J Snack Foods, 932 F.2d at 1462. Nevertheless, "merely adopting and using—and even registering—a group of marks with a common feature does not create a family of marks, even if the user intended to create a family." Victoria's Secret Stores Brand Mgmt., Inc. v. Sexy Hair Concepts, LLC, No. 07 Civ. 5804(GEL), 2009 WL 959775, at *4 (S.D.N.Y. Apr. 8, 2009) (Lynch, J.) (citing American Standard, Inc. v. Scott & Fetzer Co., 200 U.S.P.Q. 457, 461 (T.T.A.B. 1978) ). The user must show that the common characteristic itself has acquired secondary meaning as a source designator of plaintiff's goods in particular. See J & J Snack Foods, 932 F.2d at 1463 (noting the requirement of secondary meaning but clarifying that the user need not own a distinct trademark in the formative itself); compare McDonald's Corp. v. McBagel's, Inc., 649 F.Supp. 1268, 1271-72 (S.D.N.Y. 1986) (finding that McDonald's trademarks were a family of marks because of notable advertisements, sales, articles, media attention, and consumer surveys supporting that the Mc- prefix had developed secondary meaning as a formative), with Primepoint, L.L.C. v. PrimePay, Inc., 545 F.Supp.2d 426, 433-34 (D.N.J. 2008) (finding PrimePoint's PRIME prefix was not a formative of a family of marks because, although there was some evidence of general advertising, there was no other evidence supporting the prefix's secondary meaning).
Notwithstanding their notable differences, the textual identity of the word BOLD in the parties' respective marks allows plaintiff, on a motion for default judgment, to plausibly claim that the marks are, at best, of moderate similarity. Compare Virgin Enter. Ltd. v. Nawab, 335 F.3d 141, 149 (2d Cir. 2003) (holding that the marks VIRGIN and VIRGIN WIRELESS were, in light of the strength of the VIRGIN mark, similar enough to weigh in favor of a likelihood of confusion because, in addition to using the same first word VIRGIN, the context in which consumers experienced the plaintiff's mark, including through radio advertisements, nullified the marks' visual dissimilarities), and Nina Ricci, S.A.R.L. v. Gemcraft Ltd., 612 F.Supp. 1520, 1526–27 (S.D.N.Y. 1985) (finding that the marks L'AIR DU TEMPS and L'AIR D'OR were similar enough to weigh only slightly in favor of a likelihood of confusion because both marks used the same first word L'AIR, the same cursive script, and the same foreign language, but otherwise were quite dissimilar), with Nabisco, 220 F.3d at 46-48 (affirming grant of summary judgment for defendant; despite their common use of the word "Ice," the marks ICE BREAKERS and DENTYNE ICE were so visually and contextually dissimilar that consumer confusion was unlikely), Paco Sport, Ltd. v. Paco Rabanne Perfumes, 234 F.3d 1262 (table), No. 00-7344, 2000 WL 1721126, at *4 (2d Cir. Nov. 16, 2000) (finding that the parties' marks—PACO SPORT versus PACO RABANNE—were not sufficiently similar to weigh in favor of a likelihood of confusion despite the textual identity of each mark's first word PACO, because the plaintiff failed to show that the marks were either visually or contextually similar), and Juicy ZCouture, Inc. v. L'Oreal USA, Inc., No. 04 Civ.7203(DLC), 2006 WL 1012939, at *21–22 (S.D.N.Y. Apr. 19, 2006) (same conclusion regarding the marks JUICY and JUICY WEAR).
C. Competitive Proximity
As to the third Polaroid factor, plaintiff pleads facts supporting that the products are in a moderate degree of competitive proximity.
This factor addresses "whether the two products compete with each other." W.W.W. Pharm., 984 F.2d at 573 (citations omitted). "The proximity factor can apply to both the subject matter of the commerce in which the two parties engage and the geographic areas in which they operate." Guthrie Healthcare Sys., 826 F.3d at 39. Courts also evaluate "[d]ifferences in price between the two products[,]" Banfi Prods., 74 F.Supp.2d at 197 (citations omitted), and other factors indicative of competition, such as "market position" and "audience appeal," W.W.W. Pharm., 984 F.2d at 573.
Here, with respect to the commercial subject matter, both products are the same kinds of goods (such as toilets and faucets) in the same kitchen and bath fixtures market. Compare Compl. ¶ 21, with id. ¶ 31. However, plaintiff fails to allege facts supporting a finding of an equally close competitive proximity based on the channels of distribution. Plaintiff alleges that defendants sell their footwashers and faucets online at Amazon.com, but identifies no other channels used by defendants other than defendants' own websites. See Compl. ¶¶ 31, 52-53. Nor does plaintiff assert that it likewise sells any of its goods under the Kohler BOLD Marks on Amazon.com. Compare with Joules Ltd. v. Macy's Merch. Grp., Inc., 695 F.App'x 633, 637 (2d Cir. 2017) (Second Circuit concludes that the parties' goods were in close competitive proximity in part because the products were "sold online through the same or similar third-party websites"). That said, plaintiff does plead that Bold Int'l displayed its various bathroom fixtures under the BOLD mark at the 2017 Kitchen & Bath Industry Show in Orlando, Florida, where plaintiff was also marketing its own goods. See id. ¶¶ 44-46. Thus, the pleading supports the inference that there is at least some degree of geographic competition between the goods.
To the extent other considerations, such as the relative price of the parties' products—considerations for which plaintiff fails to plead facts or proffer supporting evidence—are relevant to this factor, the pleading's allegations are nonetheless sufficient on this motion to support the inference that the goods are in a moderate degree of competition. Compare Am. Auto. Ass'n, Inc. v. Limage, 15-CV-7386 (NGG) (MDG), 2016 WL 4508337, at *4 (E.D.N.Y. Aug. 26, 2016) (finding close competitive proximity where both parties operated automobile repair services in Brooklyn), with W.W.W. Pharm., 984 F.2d at 573-74 (finding a lack of competition because, although the products "share[d] some of the same channels of trade," all other indicia of competition were lacking).
D. Bridging the Gap
In this case, the bridging-the-gap factor increases the likelihood of confusion. "Bridging the gap" refers to the likelihood that the senior user (here, plaintiff) will enter into the same market as that of the junior user (here, defendants), where the goods are not yet in close competitive proximity. See Guthrie Healthcare Sys., 826 F.3d at 45. As noted above, the pleading supports a finding that the goods are currently in a moderate degree of competition. See supra pp. 724–25. Although plaintiff fails to allege facts regarding its own online channels of trade (e.g., through websites like Amazon.com), it is plausible to conclude, on this motion for default judgment, and given the ubiquity of Amazon.com in today's commerce, that consumers familiar with plaintiff's mark might mistakenly believe that plaintiff had begun to market its goods on Amazon.com. See Scarves by Vera, Inc. v. Todo Imp. Ltd., 544 F.2d 1167, 1174-75 (2d Cir. 1976).
E. Evidence of Actual Consumer Confusion.
The Polaroid factor of actual consumer confusion neither helps nor hurts plaintiff's trademark infringement claim.
"Instances of actual confusion resulting from a junior user's use of a mark similar to a senior user's can be powerful evidence supporting a likelihood of confusion." Guthrie Healthcare Sys., 826 F.3d at 44. "At the same time, if the two marks have been in use over a substantial period of time without ever producing instances of confusion, this fact can support a junior user's contention that confusion is not likely." Id. (citing McGregor–Doniger, 599 F.2d at 1136 ). In part because "[e]vidence of actual confusion can be both expensive and difficult to obtain[,]" the "absence of evidence of actual confusion does not necessarily prove anything, especially when there has been neither long nor significant experience of the two trademarks operating side-by-side in the same market." Id.
Plaintiff does not plead facts or otherwise argue that there has been actual confusion. Indeed, plaintiff concedes that it "is not aware of actual confusion[.]" Pl. Mem. at 14. However, in light of defendants' relatively recent entry into the U.S. kitchen and bath fixtures market, see Compl. ¶ 49 (alleging that Rocell began selling Bold Int'l's goods in the U.S. under the BOLD mark in 2016, approximately one year prior to the initiation of this action), this factor in the Polaroid analysis does not weigh for or against the likelihood of confusion in this case, see Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 78 (2d Cir. 1988) ("The magistrate properly declined to make any negative inference from [plaintiff's] lack of such [actual confusion] evidence in light of the short time [ (less than one year) that defendant's] product has been on the market. Thus, as the magistrate found, this factor ‘neither helps nor hurts’ [plaintiff's] case.").
F. Defendants' Intent in Adopting the Mark
In this case, defendants' intent in adopting the challenged mark—frequently discussed in terms of good or bad faith—does not weigh in favor of or against a finding of likely confusion. In this regard, the question is not whether defendants intended to copy plaintiff's mark but rather whether, in adopting their mark, defendants acted with intent to confuse. See Starbucks, 588 F.3d at 117–18. Specifically, this factor asks the narrow question of "whether the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Arrow Fastener, 59 F.3d at 397 (quotations omitted); see Starbucks, 588 F.3d at 117 (the "only relevant intent is intent to confuse" (quoting 4 McCarthy § 23.113)).
In order to establish that a defendant acted with the relevant intent to confuse in adopting its mark, the plaintiff must show, among other things, that the defendant had knowledge—be it actual or constructive—of the plaintiff's "prior similar mark[.]" Star Indus., 412 F.3d at 388-89 (collecting cases). Such knowledge may be established with circumstantial evidence, such as a showing of both the defendant's sufficient access to the plaintiff's mark and a sufficient similarity between the marks at issue. See Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir. 1993).
Moreover, even if a defendant did have knowledge of the plaintiff's similar mark prior to adopting its own mark, that "does not necessarily give rise to an inference of [an intent to confuse] and may be consistent with good faith." Arrow Fastener, 59 F.3d at 397 (citations omitted). Thus, in addition to the knowledge requirement, a plaintiff must proffer other, often circumstantial, "evidence indicating [the defendant's] intent to promote confusion or exploit [the plaintiff's] good will or reputation" in adopting the defendant's mark. Star Indus., 412 F.3d at 388-89. Factors that courts look to in determining the defendant's intent include the defendant's "[s]election of a mark that reflects the product's characteristics, request for a trademark search[,] and reliance on the advice of counsel[.]" Id. at 388 (citation omitted).
Courts are careful not to infer an intent to confuse from circumstantial evidence that, standing alone, is temporally attenuated from the defendant's adoption of its mark or is otherwise consistent with a bona fide belief that the mark would not confuse. See, e.g., Straus v. Notaseme Hosiery Co., 240 U.S. 179, 181–82, 36 S.Ct. 288, 60 L.Ed. 590 (1916) ("Defendants' persistence in their use of the design after notice proves little or nothing against them. They had been advertising their goods by name and using the design in connection with the name. The natural interpretation is not that they wanted to steal the plaintiff's good will, of which they then learned for the first time, but that they wished to preserve their own.... If the defendants' conduct was a wrong, ... it was a wrong knowingly committed, but no further inference against the defendants can be drawn from the fact."). For example, the Second Circuit has expressly held that deliberate copying is not dispositive of intent to confuse. See Starbucks, 588 F.3d at 117–18. Similarly, courts have found that the mere continued use of a mark in the face of a cease-and-desist letter is insufficient to support an inference of an intent to confuse. See E.A. Sween Co., Inc. v. Big City Deli Express Corp., 14-CV-6031 (KAM)(JO), 2016 WL 5874998, at *6–7 (E.D.N.Y. Oct. 8, 2016).
The Second Circuit's decision in Nikon, 987 F.2d at 96, presents an example of circumstantial evidence supporting an inference that a defendant adopted its mark with an intent to confuse. There, the defendant used the mark IKON in connection with the sale of cameras and in competition with the plaintiff's goods, which were sold under the mark NIKON. See id. Despite the defendant's claim that it selected the IKON mark for its "religious connotations[,]" the Second Circuit affirmed the district court's conclusion that the defendant adopted its mark with the intent to confuse. See id. The Second Circuit reasoned that, in light of the industry fame of the NIKON mark, and the defendant's founder's more than twenty years of experience in the camera industry, the district court reasonably rejected the defendant's assertion that, prior to adopting the mark, the defendant's founder did not know or even "realize there was a significant resemblance between" IKON and NIKON. Id. Moreover, there was "evidence that he rejected the advice of his counsel to adopt a mark with a word other than Ikon as the dominant part[,]" and did not even "disclose to his counsel his intent to market 35 mm cameras similar to Nikon's." Id.
Here, plaintiff argues that Bold Int'l's failed attempts at registering the BOLD mark, coupled with its continued use, indicate that defendants have acted with bad faith. See Pl. Mem. at 14-15. Specifically, plaintiff alleges that, after Bold Int'l formed in 2011 in the United Arab Emirates, it applied for registration of the BOLD mark in Europe. See Compl. ¶¶ 5, 30, 38. The EUIPO refused to register this mark because of a likelihood of confusion with plaintiff's marks. See id. ¶¶ 39-41. Bold Int'l then applied for registration with the USPTO on an intent-to-use basis. See id. ¶¶ 32-33. During prosecution, defendants commenced actual use of the unregistered mark in the U.S. See id. ¶ 49. The USPTO subsequently refused registration because of a likelihood of confusion, ultimately suspending prosecution. See id. ¶¶ 34-36. Despite this refusal, defendants have continued to use the unregistered BOLD mark in the U.S. See id. ¶ 54. Bold Int'l's European BOLD application has since been canceled in its entirety. Id. ¶¶ 42-43. Bold Int'l's appeal of this decision is currently pending, see EUIPO, File Information, bold – 010385979 , EUROPA.EU (last visited June 19, 2018), https://euipo.europa.eu/eSearch/#details/trademarks/010385979, and its U.S. application is still live (i.e., pending), see Default J. Decl., Exhibit C at 2, DE #19-3. Plaintiff cites these facts in concluding that defendants' bad faith "is apparent." Pl. Mem. at 14-15.
As noted above, courts have rejected similar attempts to infer a defendant's intent to confuse from its continued use of its mark after receiving a cease-and-desist letter. See 27-24 Tavern Corp. v. Dutch Kills Centraal, No. 14-CV-1625-FB-RER, 2015 WL 5772158, at *17–18 (E.D.N.Y. Sept. 29, 2015) (holding that the defendant's disregard of the plaintiff's cease-and-desist letter and its subsequent filing of an intent-to-use application in the USPTO constituted an insufficient basis on which to infer that the defendant adopted its mark with the intent to confuse). Plaintiff's position is arguably distinguishable. A cease-and-desist letter is an unsolicited opinion from a biased competitor, with which a defendant may reasonably disagree. See id. at *18. By contrast, the EUIPO and USPTO are neutral third parties with institutional expertise in trademark law, whose input on its rights Bold Int'l freely sought.
Nevertheless, like a cease-and-desist letter, plaintiff's proffered basis for inferring an intent to confuse is temporally attenuated from Bold Int'l's initial adoption of its mark. Indeed, in cases that are more analogous to this one, courts have held that the USPTO's finding of a likelihood of confusion does not, in itself, sufficiently support an inference of an intent to confuse. See, e.g., Mushroom Makers, Inc. v. R. G. Barry Corp., 441 F.Supp. 1220, 1230 (S.D.N.Y. 1977) ("The fact that one believes he has a right to adopt a mark already in use because in his view no conflict exists since the products are separate and distinct cannot, by itself, stamp his conduct as in bad faith, even after the Patent Office has refused the mark registration."), aff'd, 580 F.2d 44 (2d Cir. 1978) ; accord Nalpac, Ltd. v. Corning Glass Works, 784 F.2d 752, 755 (6th Cir. 1986) ; see also United States Soo Bahk Do Moo Duk Kwan Fed'n, Inc. v. Tang Soo Karate Sch., Inc., No. 3:12-CV-00669, 2015 WL 4920306, at *34–35 (M.D. Pa. Aug. 17, 2015) (holding, after a bench trial involving similar facts, that the defendant was motivated by "legal ignorance," not an intent to confuse);
Furthermore, an intent to confuse is itself attenuated from a likelihood of confusion. Given trademark law's development away from its historic roots in the tort of intentional fraud, see 4 McCarthy § 23:104, courts have struggled to justify the relevance of the intent-to-confuse factor in a Polaroid analysis, cf. id. § 23:124 (discussing the current scholarly view that the intent factor in a likelihood-of-confusion analysis should be more restrained, if not excised). One theory is that the adoption of a mark with the intent to confuse is a proxy for ultimate market conditions: the more a defendant sets up the market for consumers to be confused, the more likely it is that the defendant will succeed. Cf. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 383 (2d Cir. 1997) (citing Restatement (Third) of Unfair Competition § 22 cmt. c (1995) ("Although the actor's intent does not affect the perceptions of prospective purchasers, it may be appropriate to assume that an actor who intends to cause confusion will be successful in doing so.")). A similar theory is that the adoption of a mark with the intent to confuse "is relevant as an opinion by one familiar with market conditions, the alleged infringer himself, that there is likelihood of confusion." Maternally Yours v. Your Maternity Shop, 234 F.2d 538, 543 n.3 (2d Cir. 1956) (citing Restatement (First) of Torts § 729, cmt. f (1938) ("Since [the purported infringer] was and is intimately concerned with the probable reaction in the market, his judgment manifested prior to the controversy, is highly persuasive.")).
Some courts have held otherwise in situations where the burden of proof on this factor had shifted to the defendant—that is, where the parties' marks were identical and the defendant was the junior user. See Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097, 1101 (2d Cir. 1969) ("The defendant persisted in its use in spite of the Patent Office's denial of its application to register Kiki as its own trademark on the ground of likelihood of confusion with plaintiff's products. But for the trial court's misconception as to burden of proof, a finding of bad faith could not very well be avoided."); cf. Victorinox AG v. B & F Sys., Inc., 709 Fed.Appx. 44, 49-50 (2d Cir. 2017), as amended (Oct. 4, 2017) (holding that, in the context of a blatant counterfeiting case, defendants intended to confuse, on evidence that they had exhibited a "pattern of duplicating [plaintiffs'] products, and [defendants'] continued production of the infringing knives after Customs seized the knives that gave rise to this litigation"); see also Jeri-Jo Knitwear, Inc. v. Club Italia, Inc., No. 98 Civ. 4270(RO), 1999 WL 500146, at *3–4 (S.D.N.Y. July 15, 1999) (holding, on summary judgment, that there was a factual dispute for the jury to resolve regarding the defendants' intent to confuse, where the defendants continued to use their marks after the USPTO refused to register them because of a likelihood of confusion with the plaintiffs' mark).
The case at bar, however, presents a more nuanced factual scenario than that of mere continued use after an unfavorable USPTO finding. Setting aside whether Bold Int'l had knowledge of plaintiff's marks prior to its initial adoption of the BOLD mark in 2011, defendants entered U.S. commerce in 2016 with knowledge of plaintiff's mark based upon the EUIPO's finding of a likelihood of confusion. Whether this, coupled with the USPTO's subsequent finding of a likelihood of confusion as well as defendants' continued use, plausibly gives rise to an inference of an intent to confuse requires a more exacting analysis of the import of an administrative agency's trademark registration refusal.
Although implicating similar factors, the likelihood-of-confusion analysis that trademark examiners engage in at administrative agencies like the USPTO differs from the analysis that courts engage in during litigation, see Jane C. Ginsburg, Jessica Litman & Mary Kevlin, Trademark and Unfair Competition Law: Cases and Materials 239-40 (5th ed. 2013), in that the former analysis generally is decided upon "a comparison of the marks in the abstract," whereas courts assess the market as it actually exists, see B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 135 S.Ct. 1293, 1310, 191 L.Ed.2d 222 (2015) (Ginsburg, J., concurring) (citation omitted). In other words, an administrative agency's finding of a likelihood of confusion for registration purposes does not necessarily mean that a likelihood of confusion has been established for infringement purposes.
For example, in applications for standard character marks, the Federal Circuit has held that, regardless of how the marks are actually depicted, the Trademark Trial and Appeal Board may compare them without regard to "any particular font, style, size or color." See In re Viterra Inc., 671 F.3d 1358, 1363-66 (Fed. Cir. 2012) ; see generally Ex. A ("Standard Character Claim: Yes.").
As such, Bold Int'l's continued use of the BOLD mark after its failed attempts at registering it with the EUIPO and USPTO does not, by itself, support an inference that Bold Int'l intended to confuse upon adoption of its mark. Accordingly, this factor does not weigh in favor of or against a finding of likely confusion in this case. See Guthrie Healthcare Sys., 826 F.3d at 44 ("Bad faith is not an essential element of a claim of infringement.").
Interestingly, plaintiff's once-pending USPTO application for the mark BOLD.DESIGN. was refused registration and placed on suspension because of a likelihood of confusion with the registered mark of a third party. See Ex. B at 6; BOLD.DESIGN. Refusal Letter. If this Court were to adopt plaintiff's broad theory of bad faith, plaintiff, as well as defendants, would be deemed to be acting in bad faith.
G. Respective Quality of the Products
Plaintiff's submissions are devoid of non-conclusory facts or evidence regarding the quality of its products versus those of defendants.
If the parties' goods are of materially different quality, such a "marked difference in quality ... tends to reduce the likelihood of confusion ... because buyers will be less likely to assume that the senior user whose product is high-quality will have produced the lesser-quality products of the junior user." Savin Corp. v. Savin Grp., 391 F.3d 439, 460–61 (2d Cir. 2004). "Conversely, where the junior user's products are of approximately the same quality as the senior user's, there is a greater likelihood of confusion[.]" Id.
As the Second Circuit noted in Savin, 391 F.3d at 460–61, the relevance of this factor in a Polaroid analysis is often conflated with the likelihood of injury. If the defendant's goods are of materially inferior quality relative to the plaintiff's, then, assuming that consumers are nevertheless confused, this increases the chance of actual injury to the plaintiff's goodwill through dilution. See id. at 460–61.
Here, although plaintiff pleads facts and proffers evidence that its goods are of high quality, see Compl. ¶¶ 10-21; Robinson Decl. ¶¶ 4-10, plaintiff concedes that it does not know the quality of defendants' goods, see Pl. Mem. at 15. Instead, plaintiff argues that the Court should merely assume that defendants' goods are of "the same or similar quality" as its own. See id. Such an assumption is inappropriate on a motion for default judgment, as plaintiff bears the burden of establishing the plausibility—not mere possibility—that defendants are liable for trademark infringement. See supra pp. 713–15. There is thus no basis to infer that the relative quality of the products weighs in favor of a likelihood of confusion.
H. Sophistication of Consumers in the Relevant Market
This final factor weighs against a likelihood of confusion.
In evaluating the consumer-sophistication factor, courts consider "the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods." Star Indus., 412 F.3d at 390 (citation omitted). "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 confusion concerning the source or sponsorship of the product." Bristol-Myers Squibb, 973 F.2d at 1046 (citing Centaur Commc'ns, 830 F.2d at 1228 ). This factor does not necessarily turn on the consumer's intellectual aptitude; rather, the inquiry asks how discerning a consumer will be in a given purchasing decision. See id. In assessing the sophistication of the consumer, courts consider the nature of the product as well as its price. See Star Indus., 412 F.3d at 390 (citations omitted). For example, a consumer who purchases a relatively inexpensive, everyday product is less likely to be discerning—and thus more likely to be confused—than a consumer who purchases a relatively expensive, unusual product. See Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 259 (2d Cir. 1982) ("The ordinary purchaser of bread and margarine is a casual buyer, and the bustling, self-service atmosphere of a typical supermarket makes careful examination of products unlikely[.]"); Harold F. Ritchie, Inc. v. Chesebrough–Pond's, Inc., 281 F.2d 755, 762 n.19 (2d Cir. 1960) (noting that consumer sophistication is usually low "where inexpensive products are involved").
The Second Circuit has noted one possible exception to this principle: where the parties' marks are identical and their goods are in very close competitive proximity, a highly sophisticated consumer may be the most vulnerable to confusion. See Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986) ("[W]e believe that it is a sophisticated jeans consumer who is most likely to assume that the presence of appellee's [identical] trademark stitching pattern on appellants' jeans indicates some sort of association between the two manufacturers."). This exception does not apply here because, although the marks are somewhat similar, there is no contention that they are identical. See Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, Inc., 830 F.2d 1217, 1228 (2d Cir. 1987) (noting the exception and finding that it did not apply because, in part, the marks were not identical), superseded by rule on other grounds as stated in Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577 (2d Cir. 1993).
A plaintiff may also proffer direct evidence, such as consumer surveys probative of sophistication. See Star Indus., 412 F.3d at 390.
Here, plaintiff argues that this factor favors a likelihood of confusion. Plaintiff reasons that its "products are purchased and used by millions of U.S. consumers from every economic strata." Pl. Mem. at 15 (citing Robinson Decl. ¶¶ 8-10). According to the implications of plaintiff's argument, because there is at least some sub-group of its consumers who are economically less well off, see id., and who purchase some sub-group of plaintiff's products that are "at the lower end of the price spectrum[,]" id. at 17, and because "[t]here is no evidence to suggest that Defendants' consumers are more or less sophisticated than" plaintiff's, id. at 15, it follows that the relevant consumer base is unsophisticated, see id.
Plaintiff's argument is flawed. First, plaintiff erroneously implies that it is defendants' burden to present the Court with evidence relevant to whether its "consumers are more or less sophisticated than" plaintiff's. See id. at 15. As noted above, plaintiff is the one that bears the burden of pleading facts that plausibly establish defendants' liability. See supra pp. 713–14. Second, plaintiff fails to plead facts or proffer evidence regarding the specific prices of the parties' products, let alone whether they are unusually inexpensive.
Third, plaintiff implicitly relies upon a theory of consumer sophistication—i.e., that the less-than-affluent are unsophisticated—for which this Court is, to say the least, highly skeptical. To be sure, courts in this Circuit frequently note in passing consumer income in analyzing their sophistication. See, e.g., Coty Inc. v. Excell Brands, LLC, 277 F.Supp.3d 425, 456 (S.D.N.Y. 2017) ("[I]t could be argued that [defendant's] target demographic, ‘lower income, sometimes ethnic customers’, is likely to be less sophisticated" (internal citations omitted)). The few courts that have substantively addressed this theory, however, have rejected it as "more than a little elitist" and, if anything, pointing in the wrong direction. See Reebok Int'l Ltd. v. K-Mart Corp., 849 F.Supp. 252, 268 & n.18 (S.D.N.Y. 1994) ("In fact, an argument can be made that shoppers with limited budgets use more care in spending their more limited resources than shoppers at non-discount stores."), vacated by consent order, No. 92 CIV. 8871 (CHT), 1994 WL 733616 (S.D.N.Y. Dec. 28, 1994) ; Exxon Corp. v. XOIL Energy Res., Inc., 552 F.Supp. 1008, 1022 (S.D.N.Y. 1981) ("[A consumer's] large net worth is not, in and of itself, proof of a high degree of sophistication."); see also Thomas R. Lee et al., Trademarks, Consumer Psychology, and the Sophisticated Consumer, 57 Emory L.J. 575, 629–33 (2008) (discussing conflicting caselaw in the Southern District of New York and noting that, in the authors' view, "income and wealth are poor predictors of the exercise of consumer care"). Moreover, even if the Court were to adopt plaintiff's theory of consumer sophistication, plaintiff's proffered evidence is silent as to the extent of its consumer base that is economically less well off, thus precluding any reasonable inference from plaintiff's submissions that the ordinary consumer for plaintiff's products is not sophisticated.
Fourth, plaintiff fails to distinguish caselaw indicating that home fixtures are generally viewed as sufficiently expensive and infrequently purchased, such that consumer sophistication is relatively high. See, e.g., Black & Decker, Inc. v. N. Am. Philips Corp., 632 F.Supp. 185, 193 (D. Conn. 1986) (citing McCarthy § 23.20 (1st ed. 1984)); see also Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F.Supp.2d 442, 453 (S.D.N.Y. 2008) (noting that the parties conceded "that purchasers of countertops and sinks are sophisticated").
Finally, and most importantly, plaintiff's argument is at odds with its prior, successful representations to other courts that the purportedly confused consumers—both end-buyers as well as professional intermediaries—are sophisticated. See I.P. Lund Trading ApS v. Kohler Co., 11 F.Supp.2d 112, 123 (D. Mass.) ("According to the evidence offered by both sides [in a lawsuit charging Kohler with dilution and infringement of manufacturer's trade dress], people who purchase high-end faucets tend to use interior designers, who, in turn, are more likely to be aware of the differences between the two products. Moreover, potential purchasers of either faucet are unlikely to install the products themselves. Given the nature of the market, somewhere along the line, the person responsible for the purchase is likely to know that what they are getting is a Kohler faucet as opposed to a VOLA, a fact which weighs in favor of [Kohler and its co-defendant]. Likewise, both products are sold through similar channels of trade by distributors aware of the differences between the two faucets."), aff'd in part, vacated in part on other grounds, and remanded, 163 F.3d 27 (1st Cir. 1998).
In short, plaintiff's presentation does not establish the plausibility of its theory. Given the nature of the parties' goods and the discussed caselaw, this Court concludes that, for purposes of this motion, the relevant consumer group is at least somewhat sophisticated—that is, they are relatively discerning.
I. Aggregate Assessment of Likelihood of Confusion
The market for the parties' products is such that consumers are relatively discerning: although, by virtue of plaintiff's possible bridging the gap, consumers would view the goods as being in close competition, consumers are likely to detect the notable differences in the marks' overall commercial impressions. Absent a finding that plaintiff's marks are very distinctive, this Polaroid market analysis implies that consumer confusion is unlikely. On the other hand, the barely moderate strength of the Kohler BOLD Marks at best indicates that a likelihood of confusion here is a draw. "When the likelihood of confusion is in doubt, the question will be resolved in favor of the senior user." Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F.Supp.3d 675, 700 (S.D.N.Y. 2014) (collecting cases). Thus, on balance, this Court finds that it is just barely plausible that there is a likelihood that defendants' use of the BOLD mark will cause confusion as to the origin or sponsorship of its products. Therefore, considering plaintiff's evidentiary proffer, this Court recommends that the District Court enter default judgment against defendants for federal trademark infringement.
But for the fact that the standard on a motion for default judgment requires only a showing of plausibility, the Court might have reached a contrary conclusion. See Estee Lauder, 108 F.3d at 1511-12 (concluding that the use of the mark "100% BODY CARE" would not create a likelihood of confusion with the mark "100%" and reversing district court's post-trial entry of permanent injunction).
III. Plaintiff Plausibly Alleges That Defendants Are Liable for False Designation of Origin
In connection with both its registered marks (see Compl. ¶ 25) and the unregistered marks BOLD and BOLD.DESIGN, see id. ¶¶ 28-29, plaintiff asserts a claim under Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), see Compl. ¶¶ 3, 76-83; Pl. Mem. at 11-16, which proscribes, in relevant part, false designation of origin, or, as the Second Circuit often refers to it, "product infringement." See Resource Developers, Inc. v. Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 139 (2d Cir. 1991). Specifically, Section 43 prohibits, in connection with goods or services, the use in commerce of "any word, term, name symbol, or device, ... or any false designation of origin," that "is likely to cause confusion ... as to the origin, sponsorship, or approval" of those goods or services. 15 U.S.C. § 1125(a)(1). This provision protects both registered and qualifying unregistered trademarks See J.T. Colby & Co. v. Apple Inc., 586 F.App'x 8, 9 (2d Cir. 2014). To prevail on such a claim, a plaintiff must prove "(1) that it owns a ‘protectable trademark’ and (2) that the defendant's mark ‘is likely to confuse consumers as to the source or sponsorship of [the plaintiff's] product.’ " Id. (citation omitted); see Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006).
As discussed above, plaintiff pleads that defendants have used the mark BOLD on, among other things, Amazon.com in connection with the marketing of footwashers and faucets, such that it is plausible that consumers are likely to be confused that defendants' goods originate from or are otherwise affiliated with plaintiff, which they are not. See supra pp. 715–17, 722–23. That said, plaintiff pleads facts supporting that it owns some, but not all, of its asserted marks. As for the registered marks, the Kohler BOLD Marks' registrations provide a presumption of protectability and of plaintiff's ownership of the marks. See 15 U.S.C. § 1115(a) ; Guthrie Healthcare Sys., 826 F.3d at 37.
Plaintiff's unregistered marks stand on a different footing. For purposes of this motion, the BOLD and BOLD.DESIGN. marks are most appropriately categorized as suggestive marks, see supra pp. 717–20, and therefore are protectable without a showing of secondary meaning, see Abercrombie, 537 F.2d at 11. Nevertheless, without the presumption of ownership that accompanies registration, see 15 U.S.C. §§ 1057(c), 1115(a), the standard test of ownership of a mark is priority of use in commerce, see Threeline Imports, Inc. v. Vernikov, 239 F.Supp.3d 542, 557-58 (E.D.N.Y. 2017) (collecting cases). Plaintiff pleads that it began use of the mark BOLD.DESIGN. on January 31, 2010 in connection with the sale of medicine cabinets. See Compl. ¶ 29. In contrast, plaintiff pleads that it has yet to begin use of the mark BOLD. See id. ¶ 28; Ex. B at 2 ("Currently Use: No"); see also Talk To Me Prods., Inc. v. Larami Corp., 804 F.Supp. 555, 559-60 (S.D.N.Y. 1992) ("An application may confer a right of priority, but this is only triggered by registration. [Plaintiff's] mark is not registered. Until it is, [plaintiff] cannot rely on the constructive use provision of the new Act."), aff'd, 992 F.2d 469 (2d Cir. 1993). Consequently, plaintiff has plausibly alleged ownership of the unregistered BOLD.DESIGN. mark, but not the BOLD mark.
Therefore, this Court recommends that the District Court grant plaintiff's motion for default judgment on its claim of false designation of origin with respect to all of the (registered) Kohler BOLD Marks as well as the unregistered BOLD.DESIGN. mark, but deny its motion with respect to plaintiff's unregistered, yet-to-be-used, BOLD mark.
IV. Plaintiff Plausibly Alleges that Defendants Are Liable for New York Trademark Infringement
Plaintiff also asserts a trademark infringement claim under New York common law. See Compl. ¶¶ 3, 91-97; Pl. Mem. at 16. Trademark infringement under New York common law mirrors the above federal causes of action. See Public Free Will Corp. v. Verizon Commc'ns Inc., 15-CV-6354 (RRM) (JO), 2017 WL 1047330, at *2 (E.D.N.Y. Mar. 17, 2017) (collecting cases). Therefore, this Court recommends that the District Court grant plaintiff's motion for default judgment consistent with the above recommendations, denying only plaintiff's claim of infringement over the unregistered, yet-to-be used, BOLD mark.
V. Plaintiff Has Not Plausibly Alleged That Defendants Are Liable for New York Unfair Competition
Plaintiff asserts an unfair competition claim under New York common law. See Compl. ¶¶ 3, 98-105; Pl. Mem. at 16. "[T]he essence of unfair competition under New York common law is the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 34–35 (2d Cir. 1995) (internal quotations and quotation marks omitted). Accordingly, "there must be some showing of bad faith." Id. at 35 (citations omitted). Here, plaintiff fails to plead facts or proffer evidence supporting the plausibility of defendants' bad faith. See supra pp. 725–30; see also Jeffrey Milstein, 58 F.3d at 35 (upholding dismissal of New York unfair competition claim because the plaintiff failed to show the defendant's bad faith); Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 485 (2d Cir. 2005). Therefore, this Court recommends that the District Court deny plaintiff's motion for default judgment with respect to its New York unfair competition claim.
VI. Plaintiff Has Not Plausibly Alleged That Defendants Are Liable for New York Trademark Dilution
Plaintiff asserts a claim for trademark dilution under section 360-1 of New York's General Business Law. See Compl. ¶¶ 3, 84-90; Pl. Mem. at 17-18. This provision provides that
[l]ikelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief ... notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
N.Y. Gen. Bus. Law § 360-l. Accordingly, in order to establish a defendant's liability for trademark dilution under this section, the plaintiff must, in relevant part, show that (1) the plaintiff is the owner of a distinctive trademark, and (2) the defendant's mark is likely to cause dilution of the plaintiff's mark. See Deere & Co. v. MTD Prod., Inc., 41 F.3d 39, 42 (2d Cir. 1994) (holding that predatory intent, although once treated as an independent element, is more appropriately considered as merely a factor relevant to the likelihood-of-dilution analysis). New York recognizes two theories of dilution: by blurring and by tarnishment. See Starbucks, 588 F.3d at 114 (citing Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506-07 (2d Cir. 1996) ). Plaintiff relies only upon the former. See Compl. ¶ 89; Pl. Mem. at 17-18.
"Dilution by blurring occurs when the senior user's trademark loses its power to serve as a unique identifier of the senior user's goods because the public begins to associate the trademark with other sources." Paco Sport, 2000 WL 1721126, at *7 (citing Hormel Foods, 73 F.3d at 506 ). In determining whether there is a likelihood of dilution by blurring, courts address six factors:
(i) the similarity of the marks;
(ii) the similarity of the products covered;
(iii) the sophistication of the consumers;
(iv) the existence of predatory intent;
(v) the renown of the senior mark; and
(vi) the renown of the junior mark.
New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002) (collecting cases). With respect to the first factor, "[a] plaintiff cannot prevail on a state or federal dilution claim unless the marks at issue are ‘very’ or ‘substantially similar.’ " Playtex Prods., 390 F.3d at 167 (citation omitted).
As discussed above, plaintiff may plausibly claim that the marks at issue here are at best of only moderate similarity. See supra pp. 721–24. Despite textual similarities, plaintiff fails to plead facts or proffer evidence supporting a reasonable inference for any other meaningful degree of similarity, particularly any visual or, more importantly, contextual similarity, see id., thereby foreclosing plaintiff's claim for New York trademark dilution, see Starbucks, 588 F.3d at 106-07, 114 (holding that the marks STARBUCKS and CHARBUCKS were not similar enough to likely cause dilution by blurring because, despite near identical text and sound, the plaintiff failed to show that the marks were either visually or contextually similar, thus precluding a New York law claim of trademark dilution); Playtex Prods., 390 F.3d at 167 (holding that the marks WET ONES and MOIST ONES were not similar enough for the same reasons); Hormel Foods, 73 F.3d at 506 (holding that the marks SPAM and SPA'AM were not similar enough for the same reasons).
Therefore, this Court recommends that the District Court deny plaintiff's motion for default judgment with respect to its New York trademark dilution claim.
VII. Plaintiff's Requested Equitable Relief Should Be Denied
Plaintiff's motion for default judgment seeks various forms of equitable relief and abandons the pleading's demand for damages. See Compl., ad damnum clause ; Pl. Mem. at 18-22; Proposed Judgment ¶¶ 3-9. First, plaintiff requests that the Court enjoin defendants from using the BOLD mark and engaging in any other conduct that is likely to cause confusion. See Ex. 3 ¶ 3. Second, plaintiff requests that the Court order defendants to destroy anything (from goods to documents) that is affixed with such a mark. See id. ¶ 6. Third, plaintiff requests that the Court order defendants to transfer ownership of any domain name that incorporates any such mark. See id. ¶ 4. Fourth, plaintiff requests that the Court order defendants to rescind their USPTO trademark registration application for the BOLD mark and enjoin them from ever applying for the registration of any mark that is confusingly similar to it. See id. ¶ 5. Finally, plaintiff requests that the Court order defendants to serve plaintiff with a report under oath, describing the manner in which they satisfied the above directives. See id. ¶ 7. As a preliminary matter, it bears repeating that, while well-pled allegations pertaining to liability are deemed admitted on a motion for default judgment, allegations concerning damages and other forms of relief are not; rather, the plaintiff must proffer evidence to establish its entitlement to the relief requested. See supra pp. 713–15.
Although courts enjoy broad discretion in determining whether to grant a permanent injunction or similar equitable relief for trademark infringement, see 15 U.S.C. §§ 1116, 1118, 1119 ; Beastie Boys v. Monster Energy Co., 87 F.Supp.3d 672, 680 (S.D.N.Y. 2015) (citing Patsy's Italian Rest., Inc. v. Banas, 658 F.3d 254, 272 (2d Cir. 2011) ); Nikon, 987 F.2d at 97, their discretion is constrained by four prerequisites to such relief, see eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). Specifically, a plaintiff must demonstrate
(1) that it has suffered an irreparable injury;
(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
(4) that the public interest would not be disserved by a permanent injunction.
Id. (collecting cases).
In eBay, a patent case in which the jury had found the defendant liable for infringement, the Supreme Court held that courts may not grant permanent injunctions merely because the plaintiff succeeds in proving a defendant's liability; the plaintiff must additionally satisfy the above four equitable factors. See id. at 393-94, 126 S.Ct. 1837. The Court rejected the use of categorical rules or presumptions in performing this equitable analysis, see id. at 393, 126 S.Ct. 1837, and subsequently reiterated these principles in the context of a motion for preliminary injunction in an environmental law case, see Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20-24, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008). Thereafter, in Salinger v. Colting, the Second Circuit clearly signaled that the eBay standard is not limited to patent cases: the Court noted in dicta that "we see no reason that eBay would not apply with equal force to an injunction in any type of case[,]" and cautioned lower courts to eschew general rules or presumptions in assessing requests for injunctive relief. See 607 F.3d 68, 78 n.7 (2d Cir. 2010) (emphasis in original).
Although the Second Circuit has yet to expressly decide whether eBay extends to trademark infringement cases, see U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., 511 F.App'x 81, 85 (2d Cir. 2013), district courts in this Circuit have generally followed Salinger 's lead, reasoning that "there appears to be no principled reason not to adopt the newly announced standard in the trademark context[,]" U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., 800 F.Supp.2d 515, 539 (S.D.N.Y. 2011) (collecting cases), aff'd, 511 F.App'x 81 (2d Cir. 2013) ; accord Balady v. Elhindi, No. 13CV855 (SJ)(RER), 2014 WL 7342867, at *11 (E.D.N.Y. Dec. 23, 2014). Accordingly, even in the context of a motion for default judgment, a plaintiff seeking an injunction in a trademark infringement action must make the requisite showing on each of the four eBay factors. See Am. Auto. Ass'n, 2016 WL 4508337, at *6.
Notably, plaintiff does not dispute its burden under eBay , including its obligation to demonstrate irreparable injury. See Pl. Mem. at 18-22. Thus, in order to be entitled to a permanent injunction, plaintiff may not rely on its showing of a likelihood of confusion, but must, among other things, establish by a preponderance of the evidence that it actually has been irreparably harmed or, at the very least, that such harm is imminent. See eBay, 547 U.S. at 391, 126 S.Ct. 1837 ("A plaintiff must demonstrate (1) that it has suffered an irreparable injury...." (emphasis added)); Gowanus Dredgers v. Baard, No. 11-CV-5985 (PKC), 2013 WL 6667361, at *11 (E.D.N.Y. Dec. 17, 2013) (the mere possibility of irreparable harm was insufficient to warrant a permanent injunction; plaintiff at least had to show that its harm was imminent (citing MacIssac v. Town of Poughkeepsie, 770 F.Supp.2d 587, 593 (S.D.N.Y. 2011) ).
In the wake of eBay, courts have found irreparable injury in trademark cases in a number of contexts, such as where the plaintiff demonstrated that it had in fact lost control over its reputation. See, e.g., Barefoot Contessa Pantry, LLC v. Aqua Star (USA) Co., No. 15-CV-1092 JMF, 2015 WL 845711, at *6-7 (S.D.N.Y. Feb. 26, 2015). But the Second Circuit has been careful to require that conclusions regarding a loss of control be based on factual findings "and not simply the product of a legal presumption" arising from a likelihood of confusion. See U.S. Polo Ass'n, 511 F.App'x at 85. Hence, a plaintiff was found to have lost control over its reputation where it established that the defendant used the plaintiff's marks and trade dress after the plaintiff refused to enter into a licensing agreement specifically because the defendant did not satisfy the plaintiff's high standards of use. See, e.g., Barefoot Contessa Pantry, 2015 WL 845711, at *6–7. In such circumstances, the plaintiff had sufficiently demonstrated that confused consumers would have imputed the inferior presentation of the defendant's goods onto the plaintiff. Similarly, courts have also found irreparable injury where, for example, the plaintiff proved that it had lost goodwill because the quality of the defendant's goods and services affixed with the infringing mark were materially inferior to that of the plaintiff. See, e.g., Am. Auto. Ass'n, 2016 WL 4508337, at *6–7. Again, in such circumstances, the plaintiff had sufficiently demonstrated that confused consumers would have imputed the inferior quality of the defendant's goods and services onto the plaintiff.
In short, a plaintiff seeking a permanent injunction in a trademark infringement case must come forward with some evidence linking consumer confusion with past or imminent irreparable injury, and any grant of equitable relief must be tied to the specific facts of the case before the court. See eBay, 547 U.S. at 392-94, 126 S.Ct. 1837 ; see also Guthrie Healthcare Sys., 826 F.3d at 47. Put differently, it is insufficient for a plaintiff to rely on argument alone to establish irreparable injury. Yet, plaintiff's submissions do little more than that, offering no evidence to show that it has been irreparably harmed.
Conspicuously absent from plaintiff's submissions is any proof of consumer complaints or confusion regarding defendants' products, or of the inferior quality of defendants' products relative to plaintiff's. See Tecnimed SRL v. Kidz-Med, Inc., 763 F.Supp.2d 395, 410-11 (S.D.N.Y. 2011) (finding irreparable injury from diverted sales in a trade dress case, where there was a sharp price differential between the parties' products and a "high probability of consumer confusion" resulting from the products' similar packaging), aff'd, 462 F.App'x 31 (2d Cir. 2012) ; Barefoot Contessa Pantry, 2015 WL 845711, at *6–7 ; Am. Auto. Ass'n, 2016 WL 4508337, at *6–7. Nor does plaintiff make any showing of a drop-off in its sales since the point at which defendants' products entered the U.S. market. Instead, noting defendants' failure to appear in this action and Bold Int'l's failure to respond to plaintiff's cease-and-desist letter, plaintiff argues that, absent injunctive relief, defendants' infringing conduct will continue. See Pl. Mem. at 19-20 (citing Sexy Hair Concepts, LLC v. Sexy Hair Inc., No. 12-CV-3937 (ARR)(MDG), 2013 WL 5460629, at *4 (E.D.N.Y. Sept. 30, 2013) ). But plaintiff's argument begs the question of whether it has in fact been irreparably injured; even assuming arguendo that defendants are likely to continue their infringing conduct, a finding that plaintiff has plausibly alleged a likelihood of confusion does not, without the benefit of a discredited presumption, satisfy plaintiff's obligation to establish actual past or imminent injury under the eBay four-factor test. Therefore, the Court concludes that plaintiff has not established that it will imminently suffer irreparable injury or that remedies at law are inadequate. Cf. Pl. Mem. at 19 (stating that the first two eBay factors—irreparable injury and inadequate remedies at law—"are interrelated").
Although not necessarily required to demonstrate irreparable injury, these evidentiary gaps are illustrative of the degree of speculation required to support plaintiff's argument. Plaintiff's reference to Bold Int'l's appearance at the 2017 trade show in Orlando and possible appearances in the future does not fill this evidentiary gap, as it rests on speculation rather than proof of injury. See Pl. Mem. at 20 (arguing that such appearances "could , through confusion of the marks, damage [plaintiff's] sterling reputation or cause [plaintiff] to lose a client") (emphasis added).
In fact, it appears that Rocell's Bold Int'l products are no longer available on Amazon.com and its website is no longer functioning.
Finally, even if plaintiff had made the necessary showing, the Court questions the scope of plaintiff's requested injunction. See Guthrie Healthcare Sys., 826 F.3d at 47 (noting that "a permanent injunction must be narrowly tailored to fit specific legal violations and that a court should not impose unnecessary burdens on lawful activity" but should "frame an injunction which will keep a proven infringer safely away from the perimeter of future infringement" (internal quotation marks and quotations omitted)); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 750 (2d Cir. 1994) ("[T]he Lanham Act demands that injunctive relief be no broader than necessary to cure the effects of the harm caused." (citations omitted)); Fresh Del Monte Produce Inc. v. Del Monte Foods Co., 933 F.Supp.2d 655, 660-62 (S.D.N.Y. 2013) (plaintiffs in Lanham Act cases must satisfy the four-factor eBay test to warrant a permanent injunction, which, even if warranted, must be narrowly tailored to fit the "necessities of the particular case").
For example, in addition to requesting that the Court enjoin defendants from using its various BOLD marks, plaintiff requests that the Court enjoin defendants from using any confusingly similar mark or otherwise engaging in any activity that is likely to cause confusion. See Ex. 3 ¶ 3. Such an injunction in this case is unduly vague and defective. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 748-50 (2d Cir. 1994) ; Beastie Boys, 87 F.Supp.3d at 680 ; Fed. R. Civ. P. 65(d) ; see also Ptak Bros. Jewelry, Inc. v. Ptak, No. 06 Civ. 13732(DC), 2009 WL 1514469, at *1 (S.D.N.Y. June 1, 2009) (Chin, J.). Similarly, plaintiff's request for a transfer of ownership of defendants' domain names (see Ex. 3 at 4) is legally questionable, in that it bypasses the strictures of 15 U.S.C. § 1125(d), see Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 948–49 (9th Cir. 2002) (holding that the transfer of a domain name, as opposed to an injunction on its use, was inappropriate where the plaintiff established trademark infringement but failed to establish a violation of the Anticybersquatting Consumer Protection Act, citing 15 U.S.C. § 1125(d)(1)(C) ). Plaintiff's request for Bold Int'l to rescind its pending application with the USPTO (see Ex. 3 at 4) is also legally questionable, in that it circumvents the jurisdictional limitations of 15 U.S.C. § 1119, which gives district courts authority to cancel registered marks, not pending trademark registrations, see Zany Toys, LLC v. Pearl Enters., LLC, Civil Action No. 13-15262 (JAP)(TJB), 2015 WL 404644, at *5 (D.N.J. Jan. 28, 2015) ("Courts have rejected the argument that a district court can preempt the PTO and cancel a pending trademark application.") (collecting cases and authorities); GMA Accessories, Inc. v. Idea Nuova, Inc., 157 F.Supp.2d 234, 241 (S.D.N.Y. 2000) (Chin, J.).
For all of these reasons, this Court recommends that plaintiff's request for equitable relief be denied. See Sprint Nextel Corp. v. Welch, No. 1:13-cv-01174-AWI-SAB, 2014 WL 2106683, at *1 (E.D. Cal. May 20, 2014) (adopting the magistrate judge's recommendation that the plaintiff's request for equitable relief in a Lanham Act case be denied despite the entry of default judgment on liability, where the plaintiff's showing consisted of the factual allegations in the complaint and legal argument, and the plaintiff requested relief that was overbroad); cf. Gowanus Dredgers, 2013 WL 6667361, at *11 ("[T]he theoretical possibility that Plaintiff may be losing donations because of the alleged Trademark infringement is too speculative to give Plaintiff standing to sue."); see also TechnoMarine SA v. Giftports, Inc., 758 F.3d 493, 504 (2d Cir. 2014) ("Courts may deny requests for injunctive relief, an equitable remedy, for various reasons unrelated to the validity of plaintiff's claim.").
CONCLUSION
For the reasons set forth above, this Court concludes that, in conjunction with plaintiff's evidentiary proffer, the Complaint plausibly alleges that defendants are liable only for trademark infringement and false designation of origin under the Lanham Act and New York common law, except as to the unregistered, yet-to-be-used, BOLD mark. This Court further concludes that plaintiff's evidentiary submissions do not support its request for equitable relief. Therefore, it is the recommendation of this Court that plaintiff's motion for default judgement on liability be granted in part and denied in part and that its motion for equitable relief be denied.
Any objections to this Report and Recommendation must be filed with the Honorable LaShann DeArcy Hall on or before July 6, 2017 . Failure to file objections in a timely manner may waive a right to appeal the District Court order. See 28 U.S.C. § 636(b)(1) ; Fed. R. Civ. P. 6(a), 6(d), 72.