that defendant's products are of high quality. (E.g., A. Mejia Dep. 427)
(6) Buyer's Sophistication
This factor calls for assessment of the general impression of an ordinary purchaser buying under ordinary conditions and giving the attention that purchasers usually give in buying the relevant class of goods. W.W.W. Pharmaceutical, 984 F.2d at 575. Mejia's customers are predominantly adults between the ages of 32 and 45, most with high school diplomas and approximately half of them professionals (A. Mejia Dep. 281-82) Plaintiff's home-based operation and use of local advertising tend to militate against any assumption in the minds of consumers that they might be purchasing from a large company like IBM rather than from a smaller concern. Overall, the sophistication of the buyers is no better, from the plaintiff's point of view, than a neutral factor.
(7) Actual Confusion
Most of the evidence of actual confusion proffered by plaintiff relates to events that allegedly occurred in connection with Mejia's participation in the 1995 show called "Minority Careers in Education," which was produced by Tylin. According to Ms. Mejia, when she contacted Tylin promotions, a man who identified himself as Bob Rilli asked for her company's name, to which she responded "EduQuest." He then said, "That's IBM." (A. Mejia Decl. P 2) Ms. Mejia alleges that Tylin's Mr. Greenspan, whom she described as a friend, subsequently advised her that an event coordinator, whom she understood to be Mr. Rilli, had asked whether Mr. Greenspan knew that the name EduQuest belonged to IBM. (Id. P 3) According to Theodore Mejia, whose version of events was adopted by Ms. Mejia (A. Mejia Decl. P 5), at least 27 recipients of plaintiff's handouts at the show, including two teachers from Thomas Jefferson High School who were identified by name, responded with statements such as "Oh! We get your software." (T. Mejia Decl. P 3) According to Mr. Mejia, there were so many people who confused Mejia with IBM that day that it was not possible to keep an accurate account of the people confused. (Id.)
Plaintiff points also to deposition testimony by Louis Vigliotti, a teacher who was a friend of Ms. Mejia's, who said he was confused at first upon seeing defendant's sign at a 1992 or 1993 show. Mr. Vigliotti testified that when he saw the sign, he "walked over and said what is IBM doing with Aimee's name. I was with a [mutual friend] and I said, oh, that's Aimee's company." (Vigliotti Dep. 46-47) Mr. Vigliotti said that, when he saw the sign, he thought it was Aimee Mejia. (Id. 51) As he got closer, he saw that the sign said "IBM," at which point, he remarked to his friend, "oh shit, wow." (Id. 52) He then told his friend, "Look, IBM is using Aimee's name." (Id.) When asked whether he ever thought that Mejia was in any way related to IBM, Mr. Vigliotti responded, "No. No." (Id.)
Mr. Vigliotti's testimony does not advance plaintiff's case. At best, it is evidence of forward confusion --that he believed momentarily that Mejia was the source of IBM's display or that IBM stole Mejia's trade name. As the Second Circuit made clear in Lang, however, evidence of forward confusion simply is not relevant in a reverse confusion case. 949 F.2d at 583; accord, 3 MCCARTHY ON TRADEMARKS § 23.01, at 23-28.
This leaves the anecdotal evidence from the Mejias concerning the alleged confusion related to the 1995 Tylin show. It is of limited significance. First, it is the only evidence of actual reverse confusion in the entire record. Second, the portion of plaintiff's clientele associated with education, which was the audience at the exposition, is but a relatively small subset of Mejia's total client base. Thus, the evidence, even according it the greatest possible weight,
does not go far toward demonstrating that an "appreciable number of ordinarily prudent purchasers" are likely to be confused." Universal City Studios, Inc., 746 F.2d at 115 (emphasis added); see also id. at 118 n. 8 (the existence of a few confused consumers does not create a disputed issue of fact sufficiently material to make summary judgment improper).
Thus, plaintiff's evidence of actual consumer confusion makes this factor weigh in its favor, albeit only moderately so.
(8) Defendant's Good Faith
As noted, plaintiff has conceded IBM's good faith for summary judgment purposes.
* * * *
"The crucial issue in an action for trademark infringement or unfair competition is whether there is any likelihood 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." Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978) (per curiam) (citation omitted). cert. denied, 439 U.S. 1116, 59 L. Ed. 2d 75, 99 S. Ct. 1022 (1979). The Polaroid factors "are utilized and balanced to determine the likelihood of confusion . . ." Universal City Studios, 746 F.2d at 116. And while each of the individual Polaroid factors requires a determination of fact, the ultimate question as to likelihood of confusion is a question of law. E.g., Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 743 (2d Cir. 1994). In consequence, while likelihood of confusion often will turn on the outcome of disputed questions of fact, "summary judgment is appropriate if the court is satisfied that the products or marks are so dissimilar that no question of fact is presented" or that there is no likelihood of confusion. Universal City Studios, Inc., 746 F.2d at 116; accord, Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir. 1980); see also Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 246 (2d Cir. 1983).
In this case, plaintiff concedes IBM's good faith and, for all practical purposes, the quality of IBM's products. Viewing the evidence on each of the other Polaroid factors in the light most favorable to the plaintiff and drawing all reasonable inferences therefrom in plaintiff's favor, the Court holds that plaintiff has failed to establish that an appreciable number of ordinarily prudent purchasers are likely to be misled or confused
Defendant is entitled to summary judgment dismissing the Lanham Act claim on an independent basis. As noted, plaintiff conceded that it is entitled to no damages in view of its concession (Pl. Mem. 28) that IBM acted in good faith. See Bambu Sales, Inc. v. Ozak Trading Inc., 58 F.3d 849, 854 (2d Cir. 1995) (plaintiff must prove willful infringement to recover damages); George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992), cert. denied, 506 U.S. 991, 113 S. Ct. 510, 121 L. Ed. 2d 445 (1992) (same). All that remains is prayer for an injunction, and the Court is satisfied that equitable considerations would warrant the denial of an injunction in any case. See generally W.W.W. Pharmaceutical, 984 F.2d at 576 (court should consider equitable factors); Vitarroz v. Borden, Inc., 644 F.2d 960, 965-68 (2d Cir. 1981) (same).
In determining whether to issue an injunction in trademark case, courts typically consider (1) the nature of the senior user's priority; (2) the senior user's delay in asserting its claim; and (3) the relative harm to the parties. See Vitarroz, 644 F.2d at 967.
These factors, along with defendant's good faith in adopting the mark, strongly favor granting defendant's motion for summary judgment. While Mejia is the prior user, its use was confined in geographic scope and, even within that area, quite limited. The duration of its prior use was short. When Mejia discussed the issue with IBM in 1993, it conceded that there was no actual confusion in the marketplace.
After discussion with IBM of the possibility of selling any rights Mejia held to the word "EduQuest," plaintiff remained silent for six months before sending IBM a cease and desist letter that initiated this litigation. Although in some cases it is only with the passage of time that harm becomes apparent, there was ample opportunity for this plaintiff to assess the risk earlier. Defendant relied on plaintiff's inactivity as assurance, which is an equitable factor militating against the award of injunction at this time, especially where plaintiff's claim, if not insufficient as a matter of law, is exceptionally weak on the merits.
Moreover, even viewing the evidence most favorably to the plaintiff, the Court is not persuaded that failure to enjoin the defendant from continued use of the mark "EduQuest" would cause undue harm. Rather, the harm and unfairness would seem greater if plaintiff were awarded "exclusive dominion over the use of the [disputed] word," thereby impairing defendant's and other parties' entrance into different areas of endeavor. An "injunction would greatly harm [IBM] without giving [Mejia] much benefit. In such cases, equitable relief is not warranted." W.W.W. Pharmaceutical, 984 F.2d at 575.
IBM is entitled to summary judgment dismissing plaintiff's state law claims as well.
The conceded absence of evidence of bad faith on the part of IBM alone mandates the dismissal of the state unfair competition claim. "The essence of unfair competition under New York common law is the bad faith misappropriation of the labor and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 34 (2d Cir. 1995) (internal quotations omitted). Moreover, the lack of an issue of fact material to determining the likelihood of confusion independently warrants dismissal of the unfair competition claim. Id. at 35; W.W.W. Pharmaceutical, 984 F.2d at 576.
Nor does the dilution claim withstand summary judgment. Trademarks protected by the New York anti-dilution state, New York General Business Law § 368-d (McKinney 1984), must be of truly distinctive quality or have acquired secondary meaning in order to be protected against dilution. Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 42 (2d Cir. 1994); Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir. 1983). The term "secondary meaning" as used in New York's anti-dilution statute is not the same as defined under federal trademark law,
and many commentators and courts have required marks to be "extremely strong" to be eligible for protection. See Sally Gee, 699 F.2d at 625; see also Allied Maintenance Corp. v. Allied Mechanical Trades, Inc, 42 N.Y.2d 538, 545-46, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977). Although plaintiff has provided sufficient evidence that its mark warrants protection under the Lanham Act, plaintiff has not shown that its mark is so strong as to warrant protection under the anti-dilution statute.
In any event, there is insufficient evidence of the other essential element of a dilution claim: tarnishment or blurring.
Plaintiff has not shown tarnishment from association with IBM's mark because there is no dispute that IBM's mark is used on high quality products. See Deere & Company, 41 F.3d at 43 (tarnishment generally arises when plaintiff's mark is linked to products of shoddy quality or unsavory nature); cf. Sally Gee, 699 F.2d at 625-26 (plaintiff had not and could not prove tarnishment of its products given defendant's higher quality products). Plaintiff has pointed to no specific evidence in the record of blurring. (Pl. Mem. 33) Accordingly, defendant is entitled to dismissal of the dilution claim.
For the foregoing reasons, defendant's motion for summary judgment dismissing the complaint is granted in its entirety.
Dated: April 1, 1996
Lewis A. Kaplan
United States District Judge