5. Actual Confusion
The fifth factor looks to whether any consumers have actually been confused by the products bearing the allegedly confusing marks. See Centaur Communications v. A/S/M Communications, 830 F.2d at 1227. Evidence of actual confusion consists of (1) anecdotal evidence of confused consumers in the marketplace; and (2) consumer survey evidence. Id.
Levi concedes that it does not have any anecdotal evidence of actual instances of confusion. It argues, however, that anecdotal evidence of actual confusion is unlikely here as Jordache's total production of jeans bearing the "101" mark is so insignificant. As Jordache clearly has not infiltrated the market with products bearing the "101" trademark, the Court will not make any negative inference from the fact that Levi has not shown any anecdotal evidence of actual confusion. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d at 78 (finding that lack of actual confusion does not warrant an inference against the senior user in light of the short time in which the junior user's product was on the market).
In addition, the Court finds the survey evidence offered by Levi as evidence of actual confusion to be inconclusive. In 1992, Levi commissioned a consumer-mall intercept survey for the purpose of ascertaining the existence and level of dilution of the Levi "501" mark by Jordache's use of the "101" mark.
Levi maintains that, although the Sorenson Survey was designed to measure dilution, it also yielded evidence of confusion.
According to the survey data, when asked whether they had seen or heard of jeans having the number "101" on them, 17.7 percent of the respondents replied that they had seen those jeans before. Of this group, 29.2 percent (5.2 percent of total participants) responded that they had seen the jeans in advertising, 59.4 percent responded that they had seen the jeans in stores (10.5 percent of total participants) and 11.4 percent (2.0 percent of total participants) responded that they had seen them being worn by others.
Jordache contends that the Sorenson Survey is flawed because it did not occur under marketplace conditions, and survey participants did not have a present interest in purchasing jeans. After examining the Sorenson Survey, the Court finds, as a threshold matter, that the survey's universe was defective, rendering the data irrelevant for purposes of demonstrating actual confusion. While a survey may indicate likelihood of confusion, it must "'have been fairly prepared and its results directed to the relevant issues.'" Universal City Studios, Inc. v. Nintendo Co., 746 F.2d at 118 (quoting National Football League Properties, Inc. v. Wichita Falls Sportswear Inc., 532 F. Supp. 651, 657 (W.D. Wash. 1982)). While the Court agrees with Levi that the mall-intercept format of the Sorenson Survey is acceptable, the Court finds that the survey did not properly set forth a legitimate universe of jeans buyers.
To be valid, a survey must rely on responses by potential customers of the products in question. See 746 F.2d at 118; American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 660-661, n. 4 (2d Cir. 1979) (holding that a survey was defective where survey participants, although former purchasers of the product at issue, did not necessarily have any present purchasing interest in the particular matter being surveyed), cert. denied, 445 U.S. 951, 63 L. Ed. 2d 787, 100 S. Ct. 1601 (1980); Dreyfus Fund Inc. v. Royal Bank of Canada, 525 F. Supp. 1108, 1116 (S.D.N.Y. 1981). While the Sorenson Survey interviewed participants who had purchased or worn jeans within the past six months, it did not inquire as to whether those participants intended to purchase jeans in the future. See Deposition of Robert C. Sorenson, dated June 3, 1992, at 79-80, annexed to Jordache's Supplemental Rule 3(g) Statement as Exh. "41." As a result, the universe of respondents does not necessarily include potential purchasers of jeans. Accordingly, the Sorenson Survey does not constitute acceptable evidence of actual confusion.
Nevertheless, the failure of Levi to offer valid survey evidence of confusion does not warrant the adverse inference that confusion is not likely. "It is black letter law that actual confusion need not be shown to prevail under the Lanham Act, since actual confusion is very difficult to prove and the Act requires only a likelihood of confusion as to source." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d at 875. Moreover, while a showing of actual confusion may be probative, the absence of actual confusion is not probative. Andy Warhol Enters., Inc. v. Time Inc., 700 F. Supp. 760, 766 (S.D.N.Y. 1988); Procter & Gamble Co. v. Johnson & Johnson Inc., 485 F. Supp. 1185, 1201, n. 6 (S.D.N.Y. 1979) (holding that no inference may be drawn against plaintiff for failure to offer evidence of a confusion survey, as the opportunity was available equally to defendant to commission and offer such a survey), aff'd, 636 F.2d 1203 (2d Cir. 1980). Accordingly, although the Court finds no evidence of actual confusion, this factor does not weigh in Jordache's favor as the "101" mark has not significantly infiltrated the marketplace for jeans.
6. Defendant's Good Faith
The sixth Polaroid factor examines the good faith of the junior user in selecting the mark. "Evidence of intentional copying by a junior user may be indicative of an intent to create a confusing similarity between the products." Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1044 (2d Cir. 1992).
The existence of good faith on the part of Jordache is disputed. Jordache contends that it selected the number "101" to evoke the image that, like the first course you take in any subject in school, "Jordache Basics 101" jeans are the most basic style of jeans in Jordache's line of apparel. Jordache argues further that it is a substantial company and is, therefore, relying on its own reputation and goodwill among consumers, and not on the reputation enjoyed by Levi. Levi claims, however, that the long history of Jordache's attempts to infringe on Levi trademarks
establishes Jordache's bad faith. Levi contends further that the fact that Jordache's television commercials are strikingly similar to Levi's advertising campaigns further establishes Jordache's bad faith. In the face of this dispute, the Court finds that a conclusive determination regarding Jordache's intent must await trial.
7. Quality of Defendant's Product
The seventh Polaroid factor looks to the quality of the junior user's product. The parties apparently do not dispute that they both manufacture and distribute quality jeans and jeans apparel. Thus, Levi need not be concerned that the reputation associated with its mark is being tarnished by inferior merchandise. Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F. Supp. at 1561. However, the fact that the goods are of corresponding quality actually "supports the inference that they emanate from the same source." Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d at 1228; see also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d at 875 (holding that the good quality of the alleged infringer's product actually may increase the likelihood of confusion as to source). Accordingly, the Court finds that the seventh factor favors Levi.
8. Sophistication of Buyers
The eighth factor, the sophistication of purchasers in the relevant market, "is grounded on the belief that unsophisticated consumers aggravate the likelihood of confusion." Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d at 78. Thus, "sophistication of consumers usually militates against a finding of a likelihood of confusion, though it might on occasion increase the likelihood of confusion, depending upon the circumstances of the market and the products." Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d at 1228 (citations omitted).
The parties do not dispute that jeans purchasers are sophisticated consumers. Jordache claims that (1) jeans are an intensely personal item of clothing; (2) style, cut and fit play an important role in the consumer's selection and purchase of jeans; and (3) there exists strong brand loyalty among jeans purchasers. While Levi asserts that male purchasers do not spend a lot of time shopping, but, rather, look for particular visual cues in making quick purchase decisions, Levi does not directly controvert Jordache's contention that jeans purchasers are sophisticated consumers. Indeed, Levi agrees that the typical jeans consumer looks to brand name and fit in purchasing jeans. See Deposition of Robert Kaplan, regional sales manager at Levi, dated July 18, 1991, at 95, annexed to Jordache's Rule 3(g) Statement as Exh. "11."
Nevertheless, the fact that jeans buyers are sophisticated consumers weighs in Levi's favor. Indeed, in a case involving two competing jeans manufacturers, the Second Circuit held that the sophistication of jeans buyers actually increased the likelihood that these consumers would be confused by jeans containing nearly identical back pocket stitching patterns. Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d at 875. The Lois Sportswear court stated:
We believe that it is a sophisticated jeans consumer who is most likely to assume that the presence of appellee's trademark stitching pattern on appellant's jeans indicates some sort of association between the two manufacturers. Presumably it is these sophisticated jeans buyers who pay the most attention to back pocket stitching patterns and their 'meanings.' Likewise in the post-sale context, the sophisticated buyer is more likely to be affected by the sight of appellee's stitching pattern on appellants' jeans and, consequently, to transfer goodwill.
Id. at 875-76 (citation omitted). Similarly, in this case, the fact that jeans purchasers are conscious of trademarks further increases the likelihood that the "101" mark will cause confusion as to the association between Jordache and Levi. Accordingly, the Court finds that the eighth factor favors Levi.
Although three of the Polaroid factors weigh in Levi's favor, namely, strength of the mark, quality of the junior user's product and sophistication of the buyers, there remain disputed issues of fact with respect to similarity of the marks, proximity of the products, likelihood that Levi will bridge the gap and Jordache's intent. Accordingly, summary judgment in favor of either party is denied.
The Court next turns to Levi's motion for a preliminary injunction.
III. Preliminary Injunction
Preliminary injunctions generally are granted where there is an urgent need for speedy action to protect a party's rights. Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985). Thus, in this circuit, a preliminary injunction may be issued only when the party seeking relief can make "a showing of (A) irreparable harm and (B) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Warner Bros. Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir. 1981). A showing of irreparable harm is a requisite element for obtaining a preliminary injunction under either prong of the standard. The Court finds that Levi has not satisfied this burden.
"In the preliminary injunction context, a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of irreparable harm." Standard & Poor's Corp. v. Commodity Exchange, Inc., 683 F.2d 704, 708 (2d Cir. 1982). Significant delay in applying for injunctive relief in a trademark infringement case, however, "tends to neutralize any presumption that infringement alone will cause irreparable harm pending trial, and such delay alone may justify denial of a preliminary injunction." Citibank, N.A. v. Citytrust, 756 F.2d at 276.
In this case, while Levi diligently opposed Jordache's attempts to register various formulations of its "101" mark with the PTO, it was Jordache, rather than Levi, that commenced this action for declaratory relief. In fact, Levi refrained from moving for preliminary relief until more than a year after this action commenced, moving for a preliminary injunction as an alternative to its motion for summary judgment. Levi's failure to act sooner "'undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury.'" Id. at 277 (quoting Le Sportsac, Inc. v. Dockside Research, Inc., 478 F. Supp. 602, 609 (S.D.N.Y. 1979)).
Moreover, the fact that Jordache's production of allegedly infringing jeans has been insignificant further supports the Court's finding that Levi has failed to establish irreparable injury. As Levi conceded in its moving papers,
Jordache's total production of its 101 jeans has amounted to a mere 800 dozen,
and sales have been so infinitesimal, scattered and sporadic in the national jeans market that the likelihood of Levi Strauss having yet discovered any circumstances of actual confusion in the marketplace is far smaller than the likelihood of finding the proverbial needle in the haystack.