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.
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.
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.
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.
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.