the mark SIZES should not be protectable without proof that the mark has developed secondary meaning in the relevant market.
"To establish secondary meaning it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer." 20th Century Wear, 815 F.2d 8, 10. In determining whether a mark has acquired secondary meaning, such factors as advertising expenditures, consumer studies linking the name to a source, sales success, unsolicited media coverage of the product, attempts to plagiarize the mark, and length and exclusivity of the mark's use are relevant, but no single factor is determinative. Thompson Medical, 753 F.2d at 217. In this regard, plaintiffs have not submitted persuasive evidence that when members of the relevant consuming public see the word "Sizes," by itself, or placed at the beginning of a business name, its primary significance is that the goods originate from a single source.
Promotion and Sales
To begin with, plaintiffs' promotional practices do not support a finding of secondary meaning. Plaintiffs spend, nationally, approximately a total of a million dollars each year for advertising and promotion of the all three of the chains of stores at issue, consisting of about two hundred and fifty stores. They do not, however, generally advertise through media such as television, radio or print media, but rather through such means as direct mail, in-store promotions, and leaflet distribution. More significantly, plaintiffs have made no showing that these promotional expenditures generally feature or focus on plaintiffs' SIZES mark. Even the signs on plaintiffs' stores do not demonstrate any focus on a single SIZES mark. Plaintiffs' various stores and chains of stores all have different signs, using different lettering and coloring for the word "Sizes" (perhaps reflecting the fact that their ownership was, until relatively recently, distinct from each other).
Plaintiffs' other efforts to promote its umbrella SIZES mark are also insufficient to establish secondary meaning. Since about 1985, plaintiffs have offered their customers a credit card called "Sizes Gold," which is now held by approximately 250,000 individuals nationwide. Plaintiffs apparently have used the SIZES name on some promotional materials, including such things as gift certificates, and has used it on some packaging, such as shopping bags, as well as on a rubber stamp used for layaway goods. Plaintiffs also instruct the employees in their stores to answer the telephone with a greeting followed by the identification of the store as "Sizes."
Moreover, while the success of the stores at issue, with over $ 8,000,000 average gross sales yearly in Brooklyn, could support a finding of secondary meaning, on the present record the success of plaintiffs' Brooklyn stores has not been shown to be associated in any manner to the existence or promotion of the SIZES mark. In sum, the evidence relating to advertising, promotion and sales all demonstrates that plaintiffs did not deploy the SIZES mark, or the three marks from which it derives, in such a manner as would support a finding of secondary meaning in the word SIZES.
Consumer Recognition and Trade Usage
Plaintiffs have also submitted little evidence demonstrating that a potential customer would link the products or services offered at any or all of plaintiffs different named stores together under a SIZES rubric. The testimony of Donald McFarrell, a long-time Brooklyn store manager for the plaintiffs, in which he vouched for customer use of the mark does not lead to any different finding. Such testimony alone "by a proprietor is considered self-serving and of little probative value." 815 Tonawanda Street Corp. v. Fay's Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988). Similarly, the customer correspondence offered by plaintiffs in this regard, while evidencing some recognition of the SIZES mark by existing customers, is too insubstantial to support a conclusion that the mark was recognized by the potential customer in the public at large.
Plaintiffs' study addressed primarily to the issue of likelihood of confusion, prepared under the guidance of Norman Passman (the "Passman Study") likewise provides little support for the conclusion that plaintiffs SIZES mark, or the marks from which it derives as a group, have some consumer recognition. In that study, plaintiffs' researcher showed a carefully screened group of woman shoppers either a photo of Sizes to Pit, and a second group photographs of Shaz, another large-size women's clothing store located in the Fulton Mall. Plaintiffs asked each subject, first, without suggesting an answer to the question, whether the store at issue was affiliated with any other store. In the group that was shown Sizes to Pit, 21.6% of the respondents said it was affiliated, and for the group that was shown Shaz 18% said it was affiliated. Not only did 78% of those shown pictures of Sizes to Fit fail to indicate an awareness of an affiliation with any other store, but less than half of those who did named a store owned by plaintiffs with "Size" or "Sizes" in the name. This is an insignificant number, given the similarity of name and product between plaintiffs three stores and defendant's store which are all located in the same section of Brooklyn.
While a more compelling showing could support a finding of secondary meaning, in the absence of some greater evidence of awareness of plaintiffs' claimed marks, or of evidence connecting this awareness with the umbrella SIZES mark, or showing consumer awareness of plaintiffs' businesses as associated with each other, the survey does not support a finding of secondary meaning in SIZES alone or as used in plaintiffs' store names.
Finally, while there has been some limited usage in the trade and in the trade press of SIZES, those references predominantly reflect the plaintiffs' own way of describing and referring to the stores, appear confined to the industry, and are in no sense sufficiently pervasive or uniform as to demonstrate secondary meaning.
Length and Exclusivity of Use
This factor is equivocal. At the time defendant opened Sizes to Fit in 1992, there were no stores other than stores owned by plaintiffs in Brooklyn using the words Size or Sizes in the name which sold large-size women's clothing. However, there were a number of businesses nationwide and locally using the word "Size" or some permutation of it in their name in much the same manner as plaintiffs--to indicate a product distinguished by its size. Among the existing businesses were a chain called "PS Sizes Plus Savings," a store called "Sizes Plus" in Wallingford Connecticut, a store called "Size Plus Corner" in Nassau County, and an out of state men's clothing chain called "Sizes Unlimited." There also existed at the relevant time another store called "Size More Casuals."
In short, while there were numerous businesses in the same general market using the word SIZES or some version of it in their name, those businesses were not necessarily known to the potential consumer, and thus their existence does not weigh significantly on the issue of whether SIZES has developed secondary meaning.
Intent to Plagiarize
Plaintiffs have attempted to present evidence that defendant knew about plaintiff's marks and intentionally copied them in order to support its claim that the mark must be deemed entitled to protection.
They offered evidence showing, inter alia, that plaintiffs' stores are located near defendant's address on the Fulton Mall in Brooklyn, plaintiffs' store closest to defendant being a SIZES UNLIMITED store several blocks away on a side street on Hanover Place, off the Mall. Plaintiffs also offered evidence tending to show that the plaintiffs and the defendant are in direct competition, with similar low price points and some overlapping merchandise, although defendant's pricing tends to be lower than plaintiffs'.
At the hearing on the permanent injunction, plaintiffs also elicited additional evidence relating to Shaya Hazan's involvement in the founding and management of Sizes to Fit, which is owned by Shaya's brother, Gabi Hazan. Notably, plaintiffs elicited additional evidence that Shaya Hazan, Gabi's brother, had far more extensive experience in the clothing business than Gabi, and assisted Gabi, as well as others, in opening and merchandizing clothing stores.
While Gabi found the site for the Sizes to Fit store, Shaya negotiated the lease, and Shaya's employees acted as buyers for Gabi's store. Gabi is an officer of Sizes to Fit, Inc., and has signatory power over the store's bank account. Shaya's attorney did the legal work for the opening of Sizes to Fit, but no trademark search was done on the name. Shaya stated that he was aware that there were stores selling women's large-size clothing called SIZES UNLIMITED and SMART SIZE. He did not testify whether he knew if they were related, or if he had ever heard the SIZES name used to refer to any of those stores. Shaya also testified that he had heard of another store with a name something like "P.S. Sizes," located on Long Island. Gabi, who claims to have come up with the name at issue, did testify that he spent many months looking for a store location, before finding the present space occupied by Sizes to Fit. Plaintiffs also elicited evidence that defendant's original signs, which have since been replaced, had somewhat similar lettering to plaintiffs' signs on their nearby Sizes Unlimited store. Apparently, no trademark search was performed for "Sizes to Fit" prior to the opening of defendant's store.
This evidence, however, does not necessarily support a finding that defendant improperly intended to plagiarize plaintiffs SIZES mark and obtain its goodwill for itself, or that the mark had secondary meaning. While the evidence arguably supports a finding that one or both of defendant's principals were aware of the existence of plaintiffs' stores, the evidence here also supports the conclusion that, far from taking the mark in bad faith, the Hazans believed "Sizes" was a common word in the retail fashion industry, and available for its descriptive qualities.
Thus, defendant's awareness of some of plaintiffs' store names, in the absence of some greater indication of recognition of the mark at issue in the minds of the consuming public (or of the Hazans) than is present in this case, does not support a finding of bad faith or of secondary meaning. See Bristol-Myers, 973 F.2d at 1042 ("Although imitative intent can help support a finding of secondary meaning, . . . it does not necessarily mandate one . . ") . On the contrary, defendant's use of the word "Sizes," in its ordinary descriptive sense on its own store, indicates a lack of inventiveness and a desire to telegraph the nature of the goods sold to the public, traits shared with the plaintiffs here, and not the existence of secondary meaning in the word "Sizes."
Such descriptive use of a term amounts to fair use of that term. As explained by Judge Leval:
When the plaintiff chooses a mark with descriptive qualities, the fair use doctrine recognizes that he cannot altogether exclude some kinds of competing uses, particularly those which use words in their primary descriptive and non-trademark sense.