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October 21, 1992

TALK TO ME PRODUCTS, INC., Plaintiff, against LARAMI CORPORATION, Defendant.


The opinion of the court was delivered by: CHARLES S. HAIGHT, JR.

HAIGHT, District Judge:

 This action arises out of plaintiff's claim that defendant has infringed its trademark for a water gun.

 The case is before the court on defendant's motion for summary judgment. For the reasons stated below, the motion is granted.


 This dispute revolves around two water guns, one licensed by the plaintiff and called "The Totally Rad Soaker," the other marketed by the defendant and called "Super Soaker." *fn1"

 Plaintiff Talk to Me Products, Inc. ("TTMP") is a New York corporation with its principal place of business in New York, New York. TTMP develops, designs and licenses various types of intellectual property. Complaint, P 5; Memorandum in Opposition to the Motion for Summary Judgment ("Plaintiff's Brief") at 3.

 Defendant Larami Corporation ("Larami") is a Delaware corporation with a business address in Philadelphia, Pennsylvania. Larami develops, manufactures and distributes a variety of children's toys. Def. Exh. B, Affidavit of Alvin Davis ("Davis Aff."), P 3.

 In November, 1988, TTMP's predecessor company, Talk To Me Programs, Inc. ("TTM"), *fn2" granted a license to Blue Box Toy Factory, Ltd. ("Blue Box") for the technology of a battery-operated water gun capable of ejecting water in a continuous stream. See Affirmation of Alan B. Amron ("Amron Aff."), P 6; Def. Notice of Motion, Exh. A, License Agreement ("Agreement"). The Agreement gave Blue Box a license to, inter alia, design, market, manufacture, and sell such a water gun. The Agreement also required Blue Box to pay a 5% royalty on all sales to TTM. Agreement at 2.

 In early 1989, Larami began marketing an air pressure water gun under the name "Power Drencher." Davis Aff., P 4; Plaintiff's 3(g) Statement at 2. In April 1990, counsel for TTM informed Larami that "Drencher" was a trademark that had previously been licensed to Blue Box for the battery-operated water gun. Davis Aff., P 5. Larami then agreed, in a letter dated May 22, 1990, that it would stop using the name "Power Drencher" after it exhausted its inventory. Plaintiff's Exh. E; Amron Aff., P 24. According to Larami's vice president, Larami also informed TTM that it was renaming its water gun "Soaker." Davis Aff., P 5. Several months later, on August 24, 1990, Larami made its first shipment of air pressure water guns bearing the "Super Soaker" mark. Def. 3(g) Statement, P 2. This shipment proved to be the first of many; Larami's vice president asserts that the "Super Soaker" "has been an overwhelming commercial success and has achieved nationwide recognition." *fn3" Davis Aff., P 6.

 Prior to Larami's first shipment of the "Super Soaker," TTMP made a single interstate sale on May 15, 1990 of a battery operated water gun called "The Totally Rad Soaker." Plaintiff's 3(g) Statement, P 4. President Alan Amron of TTMP has testified, and the defendants do not dispute, that he conducted this sale by placing one water gun in a sample package designed and printed with the new name, and sold it to a buyer in Florida. Deposition of Alan Amron ("Amron Dep.") at 121-25. TTMP had previously sold this gun under the name Drenchers--which led to its letter to Larami in April--before opting to market the gun differently. Plaintiff's Brief at 4. TTMP's licensee, Blue Box, reported that it received the first order for "The Totally Rad Soaker" on August 28, 1990, and that it accomplished the first shipment on November 10, 1990. Def. Exh. H.

 On July 31, 1990, plaintiff filed an intent-to-use application to register the trademark "The Totally Rad Soaker" with the United States patent and Trademark Office ("Trademark Office") pursuant to 15 U.S.C. § 1051(b). *fn4" Plaintiff's Exh. A. According to Amron, the attorney with the Trademark Office was willing to approve the application if TTMP would disclaim the words "The Totally Rad." Amron made the disclaimer, and it was recorded by the Trademark Office in an interview record on February 5, 1991. *fn5" Plaintiff's Exh. B.

 On July 18, 1991, plaintiff filed this action for federal trademark infringement under the Lanham Act, 15 U.S.C. § 1125. The plaintiff also asserted a claim under New York common law for unfair competition and trademark infringement. TTMP alleged that defendant's use of the name "Super Soaker" infringed on its rights to the trademark "Soaker." The plaintiff's complaint sought an injunction barring Larami from using the "Soaker" trademark, as well as treble damages and attorney's fees.


 Under Fed. R. Civ. P. 56(c), the moving party is entitled to summary judgment if the papers "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." On such a motion, "the court's responsibility is not to resolve disputed issues of fact but to assess whether there are any factual issues to be tried, while resolving ambiguities and drawing reasonable inferences against the moving party." Knight v. U.S. Fire Insurance, 804 F.2d 9 (2d Cir. 1986), cert. denied, 480 U.S. 932, 94 L. Ed. 2d 762, 107 S. Ct. 1570 (1987). The responding party "must set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e). While the party resisting summary judgment must show a dispute of fact, it must also be a material fact in light of the substantive law. As the Supreme Court has held, "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).

 Larami moves for summary judgment under three different theories: 1) that TTMP has no right to sue under the "Soaker" mark because it cannot establish priority of use; 2) that TTMP's mark is not eligible for trademark protection because the mark is not inherently distinctive and TTMP cannot demonstrate "secondary meaning"; that is, it cannot show that the public has drawn a link between the "Soaker" mark and the water gun that TTMP sells; and 3) that TTMP cannot show that Larami's use of the "Soaker" mark is likely to cause confusion. *fn6"

 1. Priority of Use

 While TTMP has applied to the Trademark Office, Larami opposes that application and, so far as appears, the agency has not acted. Accordingly, "Soaker" is not a registered trademark. TTMP must therefore rely on Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). See, e.g., Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992), slip op. 6593, 6599. As the Supreme Court stated, "it is common ground that § 43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)." Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S. Ct. 2753, 2757 (1992).

 Section 43(a) of the Lanham Act provides:

 Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

 (1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, ...

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