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for the Southern District of New York

Court Dismisses Trademark Infringement Claims on Summary Judgment, Finding No Likelihood of Confusion as Matter of Law

In a March 3, 2014 ruling, Magistrate Judge Andrew J. Peck granted summary judgment to defendant New Balance Athletic Shoe, Inc. against plaintiff defendant Denimafia Inc. Denimafia asserted trademark infringement, counterfeiting and unfair competition claims (and related state law claims) against New Balance over the mark <=> on footwear. Denimafia has used the marks on “men’s t-shirts, woven shirts, jackets, chinos jeans, and casual suits, as well as women’s dresses and skirts.” New Balance used the marks on its “Minimus collection of three athletic shoe models,” as well as “‘performance running apparel, sandals, socks, other outdoor products, water shoes, multisport training shoes, and kids’ shoes.’” Although Denimafia had somewhat substantial sales of the trademarked goods before 2008, since then, its sales have been insignificant.

The Court first noted that Denimafia did not submit any survey evidence, and rejected Denimafia’s anecdotal evidence of actual confusion, consisting of five communications from individuals with whom Denimafia’s principal had previous relationships. Judge Peck found that none of this evidence showed actual confusion, but merely documented speculation that Denimafia’s principal might be collaborating with New Balance. By contrast, New Balance commissioned a survey that failed to document any evidence of actual confusion.

The Court wrote that a “‘claim of trademark infringement is analyzed under a familiar two-prong test. The test looks first to whether the plaintiff’s mark is entitled to protection, and second to whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.’” To determine the likelihood of confusion, Judge Peck applied the well known eight-factor Polaroid test.

In considering the Polaroid factors, the Court first ruled that Denimafia’s mark was weak because Denimafia had never engaged in traditional advertising, it at best achieved some unsolicited media coverage in industry-related publications and it had “relatively unsuccessful sales figures.” Judge Peck noted that in some cases of reverse confusion (where second user’s more famous use of the mark can create the impression that the original user copied the later user) the weakness of a mark can weigh in favor of the plaintiff), but rejected that conclusion here because “there is no evidence of any negative correlation between New Balance’s use of the <=> design and Denimafia’s lack of success.”

Judge Peck analyzed the remaining Polaroid factors, and concluded that they similarly weighed in New Balance’s favor or were neutral. In particular, the Court found: (1) that although the marks are identical in appearance, both parties used them only in conjunction with their house marks, tipping the similarity factor to New Balance’s favor; (2) the parties are not direct competitors, and do not sell their goods through the same channels of trade; (3) Denimafia was unlikely to “bridge the gap” by beginning to use its marks on footwear because Denimafia did not present any evidence of its imminent intent to do so; (4) there is no evidence of actual confusion; and in fact, New Balance’s unrebutted survey shows the absence of such confusion; (5) Denimafia did not meet its burden of providing any evidence that New Balance acted in bad faith – i.e., that it “used the mark with the intent to cause confusion”; (6) since the parties did not submit any evidence about their products’ quality, this factor was neutral; and (7) “in view of the uncontroverted evidence establishing Denimafia’s consumers’ sophistication, no reasonable juror could conclude that such purchasers are likely to be confused.” Judge Peck thus granted summary judgment on all of Denimafia’s claims.   
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