The opinion of the court was delivered by: SWEET
Plaintiff Banff, Ltd. ("Banff") brings this action under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), to enjoin defendant Bloomingdale's, a division of Federated Department Stores, Inc. ("Bloomingdale's"), from using a false designation of origin on women's wearing apparel and on May 16 sought a preliminary injunction against Bloomingdale's use of the mark "B Wear" in connection with the sale of women's apparel, claiming that it infringes on Banff's prior use of the trademark "Bee Wear." On the facts and conclusions set forth below, Banff's motion for a preliminary injunction is granted.
Banff is a manufacturer and distributor of women's wearing apparel throughout the United States. Since 1971, Banff has employed the trademark "Bee Wear" in marketing a particular line of women's wearing apparel. During 1971 to 1982, Banff's wholly-owned subsidiary Bee Wear Sportswear, Ltd. marketed apparel under the "Bee Wear" trademark. Following a 1982 merger between Banff and Bee Wear Sportswear, Ltd. the "Bee Wear" mark has been marketed by a division of Banff.
During this 15-year period of marketing, Banff's aggregate net sales of "Bee Wear" apparel have exceeded $75 million, including more than $10 million during the most recent year. Banff continues to manufacture and market "Bee Wear" apparel and claims that net sales and open orders of the apparel for 1986 have increased 400% over the sales for 1985.
Banff sells "Bee Wear" apparel in each of the following states in which Bloomingdale's maintains its stores: Connecticut, Florida, Maryland, Massachusetts, New Jersey, New York, Pennsylvania, Texas and Virginia. Banff's net sales of Bee Wear apparel in these states for 1985 were almost $6.8 million or approximately 68% of Banff's nationwide sales for this apparel. In each local area in which Bloomingdale's maintains a store, Banff sells its apparel to competing large department stores including Lord & Taylor, Macy's, Abraham & Strauss, and John Wanamaker. Beginning in 1973 and continuing through at least 1983, Banff has also sold Bee Wear apparel to Bloomingdale's on several occasions.
Bloomingdale's is a leading department store which commenced its business in 1872. Since the 1930's, Bloomingdale's has used the letter B, by itself and in connection with the word Bloomingdale's or a generic description of goods, to promote both its general business and particular goods. For example, Bloomingdale's has used the B mark on its buildings and prominently displayed the B during renovation of its Manhattan store in 1948. The cosmetics and perfume departments on the first floor of the Manhattan store has been heavily advertised as "B Way" since 1979. The Bloomingdale's B has also been used to adorn shopping bags, boxes, and employee identification pins. Finally, Bloomingdale's has used the B mark in combination with particular product names such as bedding, furniture polish, soap and hosiery.
As early as August, 1982, Bloomingdale's had created a special department to sell junior women's wear which was called the B Wear Department. In some of Bloomingdale's stores, these departments displayed a B Wear sign to identify them within the store. The creation of Bloomingdale's new private label brand was first considered six months ago. The vice president of Bloomingdale's in charge of general merchandise has acknowledged that when selecting the "Bee Wear" brand for Bloomingdale's, she was aware of Banff's Bee Wear mark. Banff first discovered the use of B Wear on women's apparel in March, 1986 and until this litigation was unaware of the B Wear Departments at Bloomingdale's stores.
While the Bloomingdale's B mark has been employed extensively for more than fifty years, its use has been limited to two predominant styles. The first style, which at one time was patented, is a capital "B" which has a flowing romantic shape with three-dimensional shading. The other style which has lately become more prominent is a lower case "b" which is a modern design distinguished by its simplicity and is comprised of an unadorned loop and upstroke.
The creation of Bloomingdale's private brand of women's apparel bearing the "B Wear" can be seen as yet another extension of the company's marketing based on its initial. To date, Bloomingdale's has sold approximately 87,000 units of this clothing at an average price per piece of $25.00. Presently, there are approximately 62,000 units of "B Wear" merchandise on display in Bloomingdale's chain of stores and an additional 65,000 units are on order, roughly $3 million of merchandise at retail prices, approximately one-third the volume of the sales of competing Banff products in 1985.
No surveys or other objective evidence of confusion were introduced by either party.
The standards governing motions for preliminary injunctive relief in this circuit are well-settled. To obtain such relief, the plaintiff has the burden of establishing: (1) irreparable harm, and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them fair ground for litigation and a balance of hardships tipping decidedly in the moving party's favor. Jackson Dairy, Inc. v. H. P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979).
Section 43(a) of the Lanham Act proscribes the false designation of origin in the use of trademarks by providing that:
Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce . . . shall be liable to a civil action by any person doing business in the locality falsely indicated as that of the origin or the region in which said locality is ...