W.W.W. Pharmaceutical, 984 F.2d at 575. Indeed, that Polaroid factor is hardly relevant here.
Finally, in addition to concluding that the Polaroid factors line up markedly in Beamish's favor, I note again that equitable considerations are strong here, and on this remand militate against enjoining the use of a family name that has designated this quality product, with few interruptions, since 1792--three years longer than Jim Beam. (See my prior Opinion and Order dated October 15, 1990, p.2). Consequently, in the total picture, under the Lanham Act, I find no justification, either in law or equity, for an injunction prohibiting the marketing of Beamish stout in the United States, and under that rubric, the injunction is denied and the action is dismissed.
Finally, the state-law claims asserted by Jim Beam fall for the same reasons. These are claims of unfair competition under New York common law, trademark dilution and injury to business reputation under § 368-d of the New York General Business Law, and false advertising and deceptive acts and practices arising under § 349 et seq. The only claim requiring separate consideration as between the state and federal causes of action is the trademark dilution claim under § 368-d. Unfair competition requires a likelihood of confusion as to source, Lambda Electronics v. Lambda Tech. Inc., 515 F. Supp. 915, 930 (S.D.N.Y. 1981), and Jim Beam did not present evidence of false advertising at trial.
New York's anti-dilution statute, General Business Law § 368-d, provides protection "notwithstanding the absence of competition between the parties or the absence of confusion as to the source of the goods or services." Allied Mechanical Corp. v. Allied Mechanical Trades. Inc., 42 N.Y.2d 538, 399 N.Y.S.2d 628, 632, 369 N.E.2d 1162 (1977). Section 368-d does, however, require "a likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name."
Jim Beam must prove two elements in order to satisfy § 368-d: 1) distinctiveness of the mark; and 2) likelihood of dilution. W.W.W. Pharmaceutical, 984 F.2d at 576. A third consideration, the predatory intent of the junior user, is also relevant. Id. The anti-dilution statute protects only trademarks that are quite strong and well-known. Sally Gee. Inc. v. Myra Hogan. Inc., 699 F.2d 621, 625 (2d Cir. 1983).
I have already concluded, see supra, that JIM BEAM is a strong mark. Turning, however, to the second element under § 368-d, plaintiff must show a likelihood of dilution, that is, a whittling down, blurring or tarnishing of the identity or reputation of the mark. Id. ; 3 R. Callman, The Law of Unfair Competition. Trademarks and Monopolies § 84.2 at 954-55. Here I conclude, there is no likelihood of dilution. The products are sufficiently distinct--an Irish stout and a Kentucky bourbon, the heritage of both products clearly portrayed in their respective trade dresses--that there will be no blurring. Nor, since BEAMISH is a quality stout, is there a risk of tarnishing.
Finally, the lack of predatory intent on the part of BEAMISH--indeed, its clear good faith in this entire matter -- mandates the resolution of the dilution issue in defendant's favor. The state law claims are accordingly dismissed as well.
The foregoing constitutes the Court's findings of fact and conclusions of law and is so ordered. Submit judgment on notice.
Dated: May 2, 1994
New York, New York
United States District Judge