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ROSENTHAL A.G. v. RITELITE

September 5, 1997

ROSENTHAL A.G., Plaintiff, against RITELITE, LTD., Defendant.


The opinion of the court was delivered by: AMON

 AMON, UNITED STATES DISTRICT JUDGE

 INTRODUCTION

 On November 14, 1996, this Court heard oral argument on plaintiff's motion for summary judgment pursuant to Rule 56(c) of the Federal Rules of Civil Procedure. Plaintiff brings this action for trademark infringement, false designation of origin, and false representations in violation of the Lanham Act, 15 U.S.C. §§ 32 and 43(a), as well as for common law unfair competition and injury to business reputation under the New York Anti-Dilution Statute.

 Plaintiff seeks summary judgment on all of its claims. Plaintiff seeks a limited permanent injunction, preventing defendant from using the name "Rosenthal Judaica Collection" unless it is preceded by the first name "Alex" or "Jacob" in a type of the same size, style, and prominence. Plaintiff also demands an accounting and an award of profits obtained by defendant as a result of the acts complained of, as well as an award of damages sustained by plaintiff as a result of defendant's activities. In addition, plaintiff seeks a trebling of the award of profits and damages in light of the allegedly willful and intentional nature of defendant's conduct.

 For the reasons set forth below, plaintiff's motion for summary judgment is granted with respect to its claim for trademark infringement under § 32 of the Lanham Act. Defendant is permanently enjoined from using the name "The Rosenthal Judaica Collection" on any of its products unless the name "Rosenthal" is preceded by the first name "Alex" or "Jacob" presented in a type of the same size, style, and prominence as that used to present "Rosenthal." Plaintiff is to advise the Court within ten days of the date of this Order as to whether it wishes to proceed with its claim under § 43(a) of the Lanham Act and its state law claims.

 BACKGROUND

 Plaintiff Rosenthal A.G.

 Plaintiff Rosenthal A.G. ("Rosenthal") is a German corporation, founded in 1879, with a wholly-owned American subsidiary, Rosenthal U.S.A. Ltd. Plaintiff describes itself as a "manufacturer and marketer of china, glassware, tableware, giftware, home furnishings, and other related goods." Pl.'s Statement of Undisputed Facts at P 2. Plaintiff distributes a variety of products under the Rosenthal name, including porcelain dinnerware and giftware, earthenware and fine stoneware, crystal and glass, flatware, furniture, and furnishings. Plaintiff holds registrations in the United States for its trademark "Rosenthal" and a stylized version of the name "Rosenthal." Rosenthal has used this trademark and tradename in the U.S. since 1907. See Pl.'s Statement of Undisputed Facts at P 3.

 Plaintiff has expended significant sums to advertise and promote the Rosenthal trademark and tradename both in the U.S. and internationally. *fn1" In the U.S., Rosenthal promotes its name and mark in a variety of brochures and catalogs, as well as in magazines and newspapers. For example, advertisements have appeared in The New York Times, Modern Bride, Food & Wine, and Metropolitan Home. See id. at P 9. Plaintiff's products are distributed through a wide variety of stores, including department stores such as Bloomingdale's and Neiman Marcus, as well as specialty retailers and museum gift shops. See id. at P 10.

 Plaintiff asserts that products marketed under its trademark and tradename frequently have been used by purchasers in connection with social, cultural, and family events, as well as religious ceremonies such as Christmas or Hanukkah. See id. at P 12. Plaintiff claims that many of the purchasers of Rosenthal products over the years have been persons of German and European Jewish decent; plaintiff thus claims that it has marketed items such as plates, candle holders, honey pots, and other glassware and tableware for use in connection with Jewish family, cultural, and religious ceremonies. See id. Plaintiff Rosenthal claims that the sales of such items under its trademark and tradename Rosenthal began long before the founding of defendant Rite Lite in 1993, or its predecessor Rite Lite Novelty in 1948, and prior to the first use, in approximately 1984, of the trademark Rosenthal Judaica Collection by either of the Rite Lite entities. See id.

 Plaintiff Rosenthal sets forth facts regarding its production of commemorative items connected with the State of Israel. From 1972 to 1973, plaintiff marketed, under the Rosenthal name, a plate commemorating the 25th anniversary of the creation of the state of Israel. See id. at P 13. In addition, plaintiff indicates that it plans to market products commemorating the 3000th anniversary of the city of Jerusalem. See id. Plaintiff also describes plans to participate in a competition for the design of Judaica items in 1996. See id.

 In 1992, plaintiff Rosenthal made a decision to increase the production and marketing of items under the Rosenthal trademark and tradename that could be used in connection with Jewish social, cultural, and religious events. See id. at P 14. Simultaneously, the company decided to increase sales to outlets that traditionally sell such "Judaica" items. See id. Thereafter, in 1995, Rosenthal began to manufacture and market a seder plate and kiddush cup under the Rosenthal mark. See id. Rosenthal argues that, because of its prior marketing of products to be used in connection with Jewish social, cultural, and religious events, and its involvement with products commemorating Jewish cultural life, the introduction of the seder plate and kiddush cup were natural continuations and expansions of the Rosenthal product line. Plaintiff says that these new products have not required a change in marketing or distribution, although they have been sold through new trade channels to shops in synagogues and temples.

 Defendant Rite Lite, Ltd.

 Defendant Rite Lite, Ltd. ("Rite Lite") is a New York corporation engaged in the sale of Judaica and gift items. *fn2" Defendant describes its primary business as the sale of Judaica items at wholesale. See Decl. of Alex Rosenthal at P 5. Defendant has marketed these products since 1948, and has marketed them under the Rosenthal family name as "The Rosenthal Judaica Collection" since the 1970s. *fn3" See id. at P 8. A catalog of defendant's products shows menorahs, shofars, washing cups, honey dishes, draydels, jewelry with Jewish symbols, seder plates, kiddush sets, mezuzas, and many other goods. See Pl.'s Statement of Undisputed Facts at Ex. 2. Defendants' products are sold at department stores such as Bloomingdale's, Fortunoff, Nordstrom, Broadway Stores, and Macy's; discount stores such as Walgreens, Eckerds, Linens and Things, and Bed Bath and Beyond; and supermarkets such as Publix, Extra, Waldbaums, and Red Apple. See Dep. of Alex Rosenthal at 24 - 25, 28, 32 - 33.

 The Claims

 Plaintiff claims that defendant's activities constitute an infringement of plaintiff's federally registered trademark in violation of § 32 of the Lanham Act, 15 U.S.C. § 1051. Plaintiff alleges that defendant's acts are likely to cause confusion, cause mistake, or deceive the public into erroneously believing that defendant's goods emanate from or are authorized, endorsed, or otherwise associated with plaintiff. In addition, plaintiff claims that defendant's actions infringe its tradename and constitute false designations of origin and false descriptions and representations of fact under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Finally, plaintiff claims that defendant is engaging in unfair competition in violation of New York common law and that defendant's activities create a likelihood of injury to plaintiff's business reputation and result in a dilution of the distinctiveness of plaintiff's trademark in violation of the laws of the states in which defendant has marketed its products, including, but not limited to, New York General Business Law § 368-d. Defendant asserts a counterclaim for tortious interference with defendant's business by attempting to prevent defendant from marketing its products under the Rosenthal name.

 Plaintiff has moved for summary judgment on all of its claims and for a limited permanent injunction. In support of its motion for summary judgment on its federal trademark infringement claim, plaintiff first asserts that its registrations constitute prima facie evidence of the validity of the trademarks, plaintiff's ownership of the marks, and plaintiff's exclusive right to use the mark. Plaintiff contends that the factors outlined by the Second Circuit in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), indicate that there is likelihood that consumers will be confused as to the source of defendant's goods and that consumers are likely to believe erroneously that plaintiff has somehow authorized or approved defendant's infringing goods. As such, plaintiff argues that it is entitled to relief on its claim for federal trademark infringement. Similarly, plaintiff also asserts that the likelihood of confusion entitles it to summary judgment on its claim for false representations and false designation of origin in violation of § 43(a) of the Lanham Act, as well as for its claim for unfair competition under New York common law. Finally, plaintiff asserts, citing Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624-25 (2d Cir. 1983), that liability for dilution is appropriate because plaintiff's mark has acquired a strong reputation in defendant's field, the marks are substantially similar, and plaintiff has displayed predatory intent.

 In response, defendant asserts that, although plaintiff has undoubtedly developed a product identification with its dinnerware products that is entitled to protection, the creation of a protectable trademark in that area does not empower plaintiff to extend those rights to unrelated goods where the trademark has yet to achieve protectable status. Defendant contends that plaintiff's entrance into the Judaica market is not a natural product extension or continuation of its efforts in the dinnerware or flatware markets. Defendant also argues that, as a descriptive mark, plaintiff's trademark in the name Rosenthal is entitled to protection only if plaintiff can establish secondary meaning in its mark in the Judaica market. Defendant concedes that plaintiff has acquired a secondary meaning for its trademark in certain markets but argues that, according to the factors outlined in Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 212-13 (2d Cir. 1985), plaintiff has not done so in the Judaica market. As such, defendant argues that there is no likelihood of confusion under the Polaroid standard.

 Plaintiff asserts in reply, inter alia, that its trademark and tradename are entitled to protection in the Judaica market, if there is indeed such a separate market, because Judaica items are within plaintiff's zone of natural expansion. Plaintiff argues that, as the first user of the Rosenthal mark, it is entitled to protection in a non-competitive but related market to which it might reasonably be expected to expand in the future. Plaintiff points to its gradual expansion into the Judaica market as evidence of a reasonable expectation of future expansion into the related Judaica market. Plaintiff contends that it need not show secondary meaning in the related market for Judaica products in order to warrant protection, for such a requirement would eviscerate the expansion doctrine.

 DISCUSSION

 Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). The court's function is not to resolve disputed issues of fact, but only to determine whether there is a genuine issue to be tried. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986); Eastman Machine Co. v. United States, 841 F.2d 469, 473 (2d Cir. 1988). No genuine issue exists:

 
unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.

 Anderson, 477 U.S. at 249 - 50 (citations omitted). In making this determination, the court is required to view the evidence in the light most favorable to the nonmoving party. See Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 26 L. Ed. 2d 142, 90 S. Ct. 1598 (1970); Cifarelli v. Village of Babylon, 93 F.3d 47, 51 (2d Cir. 1996). The moving party therefore:

 
always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," which it ...

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