The opinion of the court was delivered by: MOTLEY
Plaintiff, a designer and manufacturer of women's clothing and related accessories, makes this motion for a preliminary injunction enjoining defendant, the owner of a designer and manufacturer of similar goods, from using the names "Kikai" or "Kikai Paris" in connection with either his merchandise or the store in which he sells the merchandise. For the reasons stated below, this motion is granted.
Plaintiff Kookai is a French fashion design and manufacturing company based in Paris. Plaintiff uses its mark on a wide variety of clothing, perfume, fashion accessories and other products targeted primarily to young women between the ages of 15 and 25. Nearly one third of plaintiff's stores are in France, and the rest are located in 40 countries throughout the world. However, plaintiff has no stores in the United States, although it does intend to open stores in the United States in the near future. Most relevant to these proceedings, plaintiff would like to open a store in the SoHo section of Manhattan which is known as a fashionable shopping area.
Despite having no functioning stores in the United States, plaintiff has targeted American audiences in some limited ways. Since 1983, plaintiff has sold some of its products through retailers located primarily in New York and Los Angeles. It also has placed advertisements in magazines such as Elle, Vogue, and Marie Claire, which do appear on newsstands throughout New York, though plaintiff has to date restricted the advertisements to the French language versions of these magazines. Finally, plaintiff has registered the Kookai
mark on the Principal Register of the Patent and Trademark Office (PTO) on May 14, 1991 for use on and in connection with clothing and cosmetics, including perfumes.
This mark is used in plaintiff's retail stores as well as on hang tags attached to plaintiff's merchandise. Some of plaintiff's products also hear the designation "Paris" beneath the "Kookai" mark.
Defendant is the owner of a women's clothing store located in the SoHo section of Manhattan under the name "Kikai" which opened in the summer of 1996. The style, shape and color of the hang tags that defendant uses on his clothing is similar to the label and hang tags that plaintiff uses. Specifically, both tags employ black tags with white lettering. Defendant has in the past included tags which also bear the name "Paris" underneath the word "Kikai", but he has represented to the court that he does not intend to distribute products with the "Paris" designation in the future. He has not attempted to remove those tags from items already in his store, however.
In June of 1996, one of plaintiff's representatives traveled to the United States upon hearing of the existence of defendant's store. He spoke with defendant at that time regarding the use of the name "Kikai." This was followed by a letter on June 27, 1996 to defendant by plaintiff's counsel objecting to the names "Kikai" and "Kikai Paris." Shortly thereafter, this suit was filed.
Plaintiff claims infringement of a registered mark under § 32 of the Lanham Act, false designation of origin under § 43(a) of the Lanham Act, dilution under § 43(c) of the Lanham Act, unfair competition, and injury to reputation. He presently seeks a preliminary injunction which enjoins defendant from using the names "Kikai" or "Kikai Paris".
At plaintiff's request, this court issued an Order to Show Cause on October 8 directing the defendant to appear and to show cause why a preliminary injunction enjoining defendant from using the "Kikai" name on its store and its merchandise should not be issued. A hearing was then held on October 31, 1996.
A preliminary injunction should issue where the moving party demonstrates both irreparable harm and either a likelihood of success on the merits or sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in its favor. Jackson Dairy v. H.P. Hood & Sons, 596 F.2d 70 (2d. Cir. 1979). In the Second Circuit, this standard is used for alleged trademark infringements such as the one at bar. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206-07 (2d Cir. 1979). Plaintiff argues that he can demonstrate both irreparable harm and likelihood of success on the merits.
I. Likelihood of Success on the Merits
Plaintiff has raised three federal claims and two state law claims, arguing that it can demonstrate a likelihood of success on all of them. However, because the court finds that a likelihood of success on the merits is demonstrated under § 32 of the Lanham Act, there is no ...