In a June 17, 2013 ruling, Judge Miriam Goldman Cedarbaum entered judgment of non-infringement after a five day bench trial on the trademark and related counterclaims that Saturdays Surf LLC had asserted against Kate Spade LLC over Kate Spade’s use of the mark “Kate Spade Saturday.” Kate Spade had begun the lawsuit seeking a declaratory judgment that its mark did not infringe Saturdays Surf’s “Saturdays Surf NYC” mark and its other “Saturday”-formative marks. Judge Cedarbaum first considered whether Saturdays Surf’s marks were in fact protectable as marks “because a trademark’s distinctiveness is both the key consideration in assessing its protectability and a factor in determining the likelihood of confusion.” The Court held that the “Saturdays Surf NYC” mark was protectable, but rejected “Saturdays” and “Saturdays Surf” as marks.
Judge Cedarbaum then considered the likelihood of confusion between the parties’ marks under the eight Polaroid factors used in the Second Circuit. The Court found that only one factor – the strength of the mark – favored Saturdays Surf, and five factors – the similarity of the marks, the proximity of the goods in the marketplace, the likelihood of bridging the gap (i.e., that Saturdays Surf would enter the women’s wear field), the sophistication of the parties’ customers and the cost of their goods, the absence of bad faith – favored Kate Spade. Two factors – the quality of Kate Spade’s products and actual confusion – were considered to be neutral. Weighing the factors, Judge Cedarbaum found in Kate Spade’s favor, noting that the Court had been “particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men’s and women’s products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.”
