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September 14, 1994

SIZES UNLIMITED, INC. and THE AVENUE, INC., Plaintiffs, against SIZES TO FIT, INC., Defendant.

The opinion of the court was delivered by: EDWARD R. KORMAN

 Korman, J.

 Plaintiffs Sizes Unlimited, Inc. and The Avenue, Inc. are clothing retailers specializing in the sale of large-size women's clothing under the names SIZES WOMAN, SIZES UNLIMITED and SMART SIZE, as well as THE AVENUE. They bring this action for injunctive relief against another retailer, Sizes to Fit, Inc., claiming that the use of the name SIZES TO FIT on defendant's store infringed plaintiffs' rights under the Lanham Act and the state law of unfair competition.

 Plaintiffs initially sought a preliminary injunction. United States Magistrate Judge Joan M. Azrack entered a report recommending that plaintiffs request for a preliminary injunction be denied and plaintiffs filed objections to that report. Subsequently, plaintiffs withdrew their request for a preliminary injunction and agreed that the application for permanent injunctive relief would be heard on the record made in the preliminary injunction hearing and any additional evidence the parties wished to present. The factual findings of the United States Magistrate Judge are incorporated by reference here. These findings, along with the evidence presented by the parties in connection with the hearing on the permanent injunction, are summarized below to the extent relevant to the discussion of the issues.

 Plaintiffs seek injunctive relief pursuant to § 43(a) of the Lanham Act. They contend that defendant's use of the name SIZES TO FIT for its large-size women's clothing store violates plaintiffs' rights in the name SIZES, which is not a registered trademark, but is nonetheless protectable under the provisions of the Lanham Act which makes it unlawful to use

in connection with any goods or services, any word, term, name. . . or any false designation of origin which
(1) is likely to cause confusion, or to cause mistake, or to deceive as to. . . the origin, sponsorship or approval of his or her goods, services, or commercial activities.

 15 U.S.C. § 1125(a). Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S. Ct. 2753, 2757 (1992).

 Raising a claim not made in the pleadings, plaintiffs also argue that defendants use of SIZES TO FIT infringes its registered trademarks in the store names SIZES WOMAN and SMART SIZE from which, along with the unregistered SIZES UNLIMITED, the claimed unregistered SIZES mark derives. Plaintiffs assert that, under Fed. R. Civ. P. 15(b), an issue not raised by the pleadings will be treated as if it was raised if it was tried by express or implied consent of the parties. Northern Oil Co. v. Socony Mobil Oil Co., 347 F.2d 81, 83-84 (2d Cir. 1965).

 The problem with the unpled registered trademark claims in the present case, however, is that they cannot be deemed to have been tried by the implied consent of the defendant. Because these claims were not raised in the pleadings, defendant had no opportunity to raise any objections or issues it might have with respect to the enforceability of these trademarks. See, e.g., PaperCutter, Inc. v. Fay's Drug Co., Inc., 900 F.2d 558, 563 (2d Cir. 1990) (defendant may petition for cancellation of trademark as counterclaim in an infringement suit). Moreover, the parties have not fully tried or briefed the questions relating to the nature, enforceability or infringement of the registered marks. Accordingly, although it is questionable whether the additional issues would affect the outcome, the present analysis will center on the unregistered mark claimed by the plaintiffs in SIZES. *fn1"

 The eligibility for and scope of protection under section 43(a) is dependent on the nature of mark alleged infringed. Western Publishing Co., Inc. v. Rose Art Indus., Inc., 910 F.2d 57, 60 (2d Cir. 1990). In order to be protectable, the mark must tend to identify the goods sold under that mark as emanating from a particular source. In this inquiry, marks are generally categorized along a spectrum of distinctiveness. "Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

 In arguing for a preliminary injunction, plaintiffs initially took the position that their SIZES mark was descriptive, rather than generic. While the United States Magistrate Judge agreed with plaintiffs characterization of the mark as descriptive, she determined that plaintiffs could not show secondary meaning and that the mark was not protectable under Section 43(a). Plain- tiffs have since retrenched. They now argue that the mark is suggestive and that they can prevail without a showing of secondary meaning.

 The distinction between descriptive and suggestive marks is significant because descriptive marks are eligible for federal protection only if they have "become distinctive of the goods in commerce" by having developed what is known as "secondary meaning." Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S. Ct. 2753, 2757. Consumers and potential consumers of a product must, on the basis of the mark at issue, associate the goods or services at issue with a single source, even if that source is anonymous. 20th Century Wear, Inc. v. Sanmark-Stardust, Inc., 747 F.2d 81 (2d Cir. 1984), cert. denied, 470 U.S. 1052, 84 L. Ed. 2d 818, 105 S. Ct. 1755 (1985). In the absence of proof of secondary meaning, an unregistered descriptive mark is not protectable, and it is unnecessary to consider the remaining factors that would bear on the analysis of the likelihood of confusion. Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 216 (2d Cir. 1985).

 By contrast, suggestive and arbitrary marks, namely, those which require "imagination, thought and perception to reach a conclusion as to the nature of the goods," Abercrombie & Fitch, 537 F.2d at 11, are protectable under § 43(a) without proof of secondary meaning, Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. at 2757, although plaintiffs must still establish that defendant's use of the mark is likely to cause confusion as to the source of the goods carrying the disputed mark.

 I agree with the United States Magistrate Judge that the mark in issue is descriptive and that, even if it is suggestive, plaintiffs have failed to satisfy their burden of showing that "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused as to the source of the goods in question." McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979). Because there is little to add to her discussion of the latter issue, I address here the newly asserted argument that the mark is not descriptive.


 The determination of the character of a mark is made in the context of its use by the party claiming rights in that mark. As explained time and again by the Court of Appeals for the Second Circuit "the focus in categorizing a mark is on how the words are used in context rather than their meaning in the abstract" Bristol-Myers Squibb Co. v. McNeil-P.P.C., 973 F.2d 1033, 1041 (2d Cir. 1992). "The word "apple" would be arbitrary when used on personal computers, suggestive when used in 'Apple-A-Day' on vitamin tablets, descriptive when used in 'Tomapple' for combination tomato-apple juice and generic when used on apples." Id. citing 1 J.T. McCarthy, Trademarks and Unfair Competition § 11:22, at 498-99 (2d ed. 1984).

 The principal issue presented here is whether, as argued by defendant, plaintiffs' use of the SIZES mark, in the context of a group of stores selling large size women's clothing, must be understood to be descriptive, rather than suggestive, because SIZES directly indicates the most important marketing feature of plaintiffs' merchandise, that is, their size. Defendant therefore asserts that plaintiffs must make a showing of secondary meaning before they have established an interest in the mark which would entitle them to relief. Plaintiffs, on the other hand, contend that the mark is suggestive because SIZES does not directly describe ...

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