The opinion of the court was delivered by: FEIKENS
Plaintiff, Haven Capital Management, Inc. ("Haven"), provides investment advice to its clientele, manages funds for them on a separate account basis, and operates the Haven Fund, a mutual fund in which clients purchase shares. The investments are in marketable equity and fixed income securities, primarily in investment grade domestic companies. It promotes itself as a conservative investment management firm that emphasizes long-term growth at a reasonable price.
Defendants, Havens Advisors, Havens Partners and Havens Associates, provide advice and management services to its clientele in "event based" investing, i.e., primarily in risk arbitrage, in hedges and in distressed securities. Risk arbitrage is an investment strategy designed to profit from proposed mergers, takeovers, tender offers, recapitalizations and spin-offs. Hedges, simply stated, are mechanisms for the taking of compensatory measures so as to counterbalance possible loss. Distressed securities typically consist of the debt of companies that are financially impaired and securities that are unlikely to be honored on their original terms.
Defendant Nancy Havens-Hasty is president of Havens Advisors and managing member of Havens Associates. Hasty's maiden name is Havens; her married name is Hasty. She was married in 1984. In May of 1995 she decided to use her maiden name, Havens, in connection with the businesses now known as Havens Advisors, Havens Partners and Havens Associates.
Plaintiff is the owner of Registration No. 1,939,827 on the Principal Register of the United States Patent and Trademark Office for the service mark "HAVEN," registered for use in connection with "financial investment consulting services and financial investment services in the field of financial assets." This registration was issued on December 5, 1995, reciting a date of first use in commerce of 1983.
Plaintiff is also the owner of Registration No. 1,943,964 on the Principal Register of the United States Patent and Trademark Office for the service mark "THE HAVEN FUND," registered for use in connection with "mutual fund investment services." This registration was issued on December 26, 1995, reciting a date of first use in commerce of June 1994.
The mark "Haven" and the mark "The Haven Fund" and the defendants' mark "Havens" are used also as trade names.
Plaintiff Haven, citing the Lanham Act and the New York statute (Title 15, U.S.C. Sections 1111 ff, and Sections 368(d) and 349 of the New York General Business Law), seeks an injunction prohibiting defendants from the use of the name "Haven."
No monetary damage is sought.
The Lanham Act states, and the cases teach, that a trademark and a trade name provide protection against a use of that mark or name by another which causes a likelihood of confusion.
The pertinent provision in the Lanham Act is Section 1114(1)(a). It reads:
(1) Any person who shall, without the consent of the registrant --
(a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; ....
shall be liable in a civil suit for the remedies hereinafter provided.
The New York statute protects against dilution of a trademark in similar fashion. The Issue is whether there is a likelihood of confusion.
To decide this, a seminal case, Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492 (2d Cir. 1961), points the way. In that case, Judge Friendly referred to a number of variables which had to be tested. He prefaced this listing by stating that these variables should be considered where the products of the prior owner (plaintiff here) are different from those of the defendant (see also Lever Bros. Co. v. American Bakeries, 693 F.2d 251 (2d Cir. 1982). Those variables are: (1) the strength of the mark; (2) the degree of similarity between the marks; (3) the proximity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion between the two marks; (6) ...