AND UNFAIR COMPETITION, §§ 11:2, 11:3, 11:4A (2d ed. 1984)).
Based on these guidelines, the Court finds that the FRINK mark
is properly classified as a fanciful mark.
The next step is to determine the product's "distinctiveness
in the marketplace." Streetwise Maps, Inc., 159 F.3d at 743.
Here, defendant has not demonstrated that the strength of
plaintiff's mark has been diminished by third-party use, and
plaintiff has not demonstrated that its mark is "exceptionally
strong." See Nabisco, Inc. v. PF Brands, Inc., 1999 WL 47313,
at *12 (S.D.N.Y. Feb.3, 1999) (finding the Pepperidge Farm
Goldfish to constitute a strong mark); see also Mondo, Inc. v.
Sirco Int'l Corp., 1998 WL 849401, at * 6 (S.D.N.Y. Dec.7,
1998). Accordingly, the Court finds that the FRINK mark is
entitled to some trademark protection. Therefore, this factor
slightly favors plaintiff. See Streetwise Maps, Inc., 159 F.3d
2. Similarity of the Marks
"In determining whether the two marks are similar, and
therefore likely to provoke confusion among prospective
purchasers, courts appraise 'the overall impression created by
the logos and the context in which they are found and consider
the totality of factors that could cause confusion among
prospective purchasers.'" Streetwise Maps, Inc., 159 F.3d at
744 (quoting Gruner Jahr USA Publ'g, 991 F.2d at 1078).
Because plaintiff alleged that defendant used the actual FRINK
mark in the United States, this factor favors plaintiff. See
"This factor considers whether the two products compete in
the same market." Id. at 745. Because defendant's efforts were
aimed at directly competing with plaintiff with respect to a
targeted class of consumers in the United States —
governmental agencies such as airports and highway departments
that use large snowplows — this factor favors plaintiff. See
Gruner Jahr USA Publ'g, 991 F.2d at 1078.
4. Bridging the Gap
Because the parties already occupy the same market of large
snowplows for use by governmental agencies, the gap has been
bridged and this factor is therefore "not relevant as an
individual factor." See Streetwise Maps, Inc., 159 F.3d at 743.
5. Actual Confusion
"[E]vidence of actual consumer confusion is particularly
relevant to a trademark infringement action." Id. at 745
(citing Sports Auth., Inc. v. Prime Hospitality Corp.,
89 F.3d 955, 963-64 (2d Cir. 1996)). In the present case, plaintiff
failed to provide any relevant evidence — in the form of
affidavits or other documentary evidence — of actual confusion
between the two products. Rather, plaintiff relies primarily on
a "presumption of confusion" based on defendant's inadvertent
distribution of sales literature and invoices bearing the Frink
America name in the United States.*fn10 Pl. 7.1 Stat. at ¶ 43.
At most, plaintiff has shown the possibility, rather than the
probability of confusion. See Gruner Jahr USA Publ'g, 991
F.2d at 1079. Accordingly, "the absence of proof of actual
confusion, although not dispositive of the question of
likelihood of confusion," is a factor strongly favoring
defendant. Streetwise Maps, Inc., 159 F.3d at 745 (citing Arrow
Fastener Co., Inc., 59 F.3d at 397).
6. Good Faith
"This factor considers 'whether the defendant adopted its
mark with the intention of capitalizing on plaintiff's
and goodwill and any confusion between his and the senior
user's product.'" Arrow Fastener Co., Inc., 59 F.3d at 397
(quoting Lang v. Retirement Living Publ'g Co., Inc.,
949 F.2d 576, 583 (2d Cir. 1991)). Although "'[i]ssues of good faith are
generally ill-suited for disposition on summary judgment,'"
Lang, 949 F.2d at 583 (quoting Leberman v. John Blair & Co.,
880 F.2d 1555, 1559-60 (2d Cir. 1989)), the Court finds that
defendant acted in good faith. See, e.g., id.
Defendant contends, and plaintiff does not dispute, that its
use of the FRINK trademark in the United States was based on
its inadvertent distribution of sales invoices and advertising
materials bearing the FRINK mark by defendant's sales staff.
See Deft. Mem. of Law at 18. After learning that this had
occurred, defendant immediately recalled these materials. See
id. Accordingly, the Court finds that the evidence, taken as a
whole, does not reasonably give rise to an inference of bad
faith. Accordingly, this factor favors defendant.
7. Quality of Defendant's Product
Because the parties do not argue that the quality of their
products are not similar, this factor is neutral, and thus,
favors neither party. See Streetwise Maps, Inc., 159 F.3d at
743 (citing Gruner Jahr USA Publ'g, 991 F.2d at 1079 (Quality
is weighed against the defendant only "when there is an
allegation that a low quality product is taking unfair
advantage of the public good will earned by a well-established
high quality product.")).
8. Sophistication of the Parties
The final Polaroid factor "recognizes that the likelihood of
confusion between the products at issue depends in part on the
sophistication of the relevant purchasers." Arrow Fastener Co.,
Inc., 59 F.3d at 398 (citing W.W.W. Pharm. Co., Inc., 984 F.2d
at 575). Thus, courts consider "'[t]he general impression of
the ordinary purchaser, buying under the normally prevalent
conditions of the market and giving the attention such
purchasers usually give in buying that class of goods.'" The
Sports Auth., Inc., 89 F.3d at 965 (quoting W.W.W. Pharm. Co.,
Inc., 984 F.2d at 575) (quotation omitted). "'[T]he more
sophisticated and careful the average consumer of a product is,
the less likely that similarities in . . . trademarks will
result in confusion concerning the source of sponsorship of the
product.'" Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.
1993) (citation omitted).
Here, the snowplows are sold through a detailed competitive
bidding process where the potential consumers — governmental
agencies such as airports and highway departments — possess a
high level of knowledge and are spending substantial amounts of
money on specialized snow removal equipment. See Arrow Fastener
Co., Inc., 59 F.3d at 398-99. Compare The Sports Auth., Inc.,
89 F.3d at 965 (finding that consumers are not likely to be
sophisticated where goods and services sold by the parties
involve inexpensive food and sporting goods). Furthermore, the
products at issue here are targeted for a specialized class of
consumers who possess a high level of sophistication and who
are not likely to be confused by the different snowplows
marketed by the parties. See Arrow Fastener Co., Inc., 59 F.3d
at 399. Accordingly, this factor favors defendant.
After carefully assessing the combined weight of the
Polaroid factors, the Court finds that there is not a probable
likelihood consumers will be confused by defendant's alleged
use of the FRINK trademark. Of the eight factors examined
above, three factors favored plaintiff (factors 1, 2, and 3),
three factors favored defendant (5, 6, and 8), one factor was
irrelevant (factor 4), and one factor was neutral (factor 7).
While "[n]o single factor is dispositive," Arrow Fastener Co.,
Inc., 59 F.3d at 400, the Court finds that plaintiff's primary
evidence of infringement — sales invoices and advertising
material bearing the FRINK mark — is insufficient
to give rise to a genuine issue of fact that there was a
likelihood that consumers were confused by defendant's use of
the FRINK mark. This conclusion is supported in light of the
process the parties engage in when marketing their goods for
sale to the public. Specifically, the parties acknowledge that
sales of snow removal equipment in the United States are
achieved through a competitive bidding process whereby the
lowest bidder is awarded the contract. See Pl. 7.1 Stat. at ¶
33; Deft. Mem. of Law at 18 n. 7. Because the sales invoices
and advertising materials cited by plaintiff are not likely to
be seen by consumers who participate in the bidding process, it
logically follows that these materials are not likely to "cause
an appreciable number of ordinarily prudent purchasers to be
confused, as is required for a successful trademark
infringement claim." Gruner Jahr USA Publ'g, 991 F.2d at
1080. Accordingly, defendant's motion to dismiss plaintiff's
trademark infringement claims is granted.
F. Trademark Dilution Claims
In its Complaint, plaintiff asserts federal and state
trademark dilution claims. In its moving papers, defendant
argues that because the remedy for a dilution claim is
generally injunctive relief,*fn11 see 15 U.S.C. § 1125(c)(2);
N Y GEN. BUS. LAW § 368,*fn12 plaintiff's claims are moot
because defendant has "ceased using the FRINK mark anywhere in
the world, . . . has since quit the snowplow business entirely
and plainly has no intention or desire to use the FRINK mark at
any time in the future." Deft. Mem. of Law at 18-19 (emphasis
in original). Plaintiff, however, does not address these claims
or defendant's arguments in its opposition papers, leading the
Court to conclude that plaintiff has abandoned its trademark
dilution claims. See Riley, at 466; Lauro, 39 F. Supp.2d at 366
n.13; Douglas, 21 F. Supp.2d at 393.
The Court also notes that plaintiff's claim for injunctive
relief on its trademark dilution claims is moot in light of
"'A suit for injunctive relief is moot when the offending
conduct ceases and the court finds that there is no reasonable
expectation that it will resume.'" Greilsheimer v. Ferber Chan
& Essner, 1998 WL 547092, at *2 (S.D.N.Y. Aug.27, 1998)
(quotingAmerican Express Travel Related Servs. Co., Inc. v.
MasterCard Int'l Inc., 776 F. Supp. 787, 789 (S.D.N Y
1991)(internal citation omitted)); Upjohn Co. v. American Home
Prods. Corp., 598 F. Supp. 550, 554 (S.D.N.Y. 1984).
Here, defendant asserts that it has ceased using plaintiff's
mark and exited the snow removal equipment business. Plaintiff
does not dispute, nor has it presented evidence to contradict
defendant's assertion. Because there is no indication that
defendant's "offending conduct" will resume in the future,
plaintiff's request for injunctive relief is dismissed as moot.
See Greilsheimer, 1998 WL 547092, at *2-*3; see also Coors
Brewing Co. v. Anheuser-Busch Cos., Inc., 802 F. Supp. 965, 970
(S.D.N.Y. 1992). Compare Upjohn Co., 598 F. Supp. at 555
(injunctive relief claim not dismissed as moot where offending
were distributed contrary to defendant's assurances and
defendant "made no attempt to retrieve these materials or to
instruct the trade to disregard them").
G. Supplemental Jurisdiction
In the present case, the parties' federal and state law
claims and counterclaims all arise out of the same transaction
and occurrence. Remaining, however, are plaintiff's state law
claims and defendant's federal and state law counterclaims.
Thus, defendant's federal counterclaims provide an independent
basis of federal jurisdiction in this action. Accordingly, the
Court will retain supplemental jurisdiction over the remaining
state law claims and counterclaims. See 28 U.S.C. § 1367(a)
(West 1999); 6 CHARLES A. WRIGHT, ARTHUR R. MILLER & MARY KAY
KANE, FEDERAL PRACTICE AND PROCEDURE: CIVIL 2D § 1414 (West
For all of the foregoing reasons, defendant's motion for
summary judgment is granted in part, and denied in part.
Defendant's motion for summary judgment is GRANTED with respect
to plaintiff's federal and state law trademark infringement,
federal and state trademark dilution, copyright infringement,
trade dress infringement, breach of contract, misappropriation
of trade secrets, tortious interference with business relations
and federal unfair competition claims, and DENIED with respect
to plaintiff's state unfair competition and conversion claims.
IT IS SO ORDERED.