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NEW YORK SOC. PUBLIC ACCOUN. v. ERIC LOUIS ASSOC.

December 2, 1999

THE NEW YORK STATE SOCIETY OF CERTIFIED PUBLIC ACCOUNTANTS, PLAINTIFF,
v.
ERIC LOUIS ASSOCIATES, INC., DEFENDANT.



The opinion of the court was delivered by: Sand, District Judge.

OPINION

Plaintiff The New York State Society of Certified Public Accountants ("the Society" or "Plaintiff") commenced this action against Defendant Eric Louis Associates ("ELA" or "Defendant") on April 27, 1999, asserting causes of action for (1) trademark/servicemark infringement, false designation of origin, and unfair competition under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) trademark/servicemark dilution under § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); (3) trademark/servicemark dilution under New York General Business Law § 360-1; and (4) copyright infringement under § 101 et seq. of the Copyright Act of 1976, 17 U.S.C. § 101 et seq. On the same date, the Society moved for a preliminary injunction, and applied for and was granted a temporary restraining order. After two adjournments, a hearing on the Society's preliminary injunction motion was set for May 24, 1999. On that date, counsel orally stipulated to entry of an order of permanent injunction, and the Court issued such an Order on June 1, 1999.*fn1 The Order authorized the Society to apply for an award of monetary damages and/or attorneys fees by June 25, 1999. Presently before the Court is (1) the Society's application for an award of attorney fees under § 35(a) of the Lanham Act, 15 U.S.C. § 1117(a); and (2) the Society's motion for discovery and a bearing pursuant to an application for an award of damages, infringer's profits, costs, and/or attorney fees under §§ 504(b) and 505 of the Copyright Act, 17 U.S.C. § 504(b), 505.

This application for attorney fees and damages comes to the Court in an awkward procedural posture. Faced with Plaintiff's motion for a preliminary injunction, Defendant chose to forego briefing and a hearing on the claims of liability raised in that motion-deciding instead to consent to an order permanently enjoining Defendant from continuing the actions that, according to Plaintiff, were violative of Plaintiff's servicemark and copyright. Furthermore, Defendant's formal consent to that order is replete with disclaimers of liability.*fn2 Similarly, Defendant's submissions in opposition to Plaintiff's application for damages and attorney fees contain numerous denials of liability.*fn3 Finally, as is discussed more fully in Sections I and II below, a determination that a prevailing plaintiff in a trademark action is entitled to attorney fees requires a determination that the defendant's infringing or diluting conduct was willful or tinged with bad faith. This latter determination obviously presupposes an initial finding of infringement and/or dilution.

Taken together, the preceding considerations raise the question whether the Court can simply infer Defendant's liability on Plaintiff's underlying infringement and dilution claims from Defendant's consent to the permanent injunction — thereby ignoring Defendant's disclaimers of liability — or, instead, is obliged to decide these liability issues.

Unfortunately, however, there appears to be no clear, direct legal authority on this question, and the legal rules hearing on it indirectly point in conflicting directions.

We begin with three Federal Rules of Civil Procedure. First, Federal Rule of Civil Procedure 65(d) provides in relevant part that "[e]very order granting an injunction . . . shall set forth the reasons for its issuance. . . ." Where such an order is issued on the basis of the defendant's consent to an injunction, however, this requirement could be satisfied by a simple statement of this fact (i.e., by the statement that the order is being issued because the defendant has consented to the injunction). Hence, this rule is of little help.

Similarly, Federal Rule of Civil Procedure 52(a) requires in relevant part that "[I]n all actions tried upon the facts without a jury or with an advisory jury, the court shall find the facts specially and state separately its conclusions of law thereon. . . ." At least one court has held that this requirement applies to actions seeking a permanent injunction. See United States v. Rohm & Haas Co., 500 F.2d 167, 177 (5th Cir. 1974) (emphasis added) (citations omitted) ("In cases tried without a jury, Rule 52(a) mandates findings of fact and conclusions of law sufficiently detailed and exact to indicate the factual basis for the District Court's ultimate conclusion. Although the rule refers only to the granting or refusing of interlocutory injunctions, the language `all actions tried upon the facts without a jury' encompasses suits in which permanent injunctions are issued."). As the language of both the rule and that opinion indicate, however, the rule appears to be predicated on the "trying" of an issue and subsequent deciding thereof by a court. In approving the agreement embodied in the permanent injunction Order, the Court did not decide any issue in dispute between the parties. Hence, Rule 52(a) provides no more guidance than does Rule 65(d).

Third, Federal Rule of Civil Procedure 68 creates a mechanism by which defendants "may serve upon the adverse party an offer to allow judgment to be taken against" them. As this mechanism is closely analogous to the more informal procedure of consenting to entry of a permanent injunction, the case law interpreting Rule 68 may shed some light on the issue under consideration here. Courts have held that Rule 68 offers can be made in cases seeking equitable relief, see 12 Charles A. Wright, Arthur R. Miller & Richard L. Marcus, Fed. Prac. & Proc. § 3001.1, at 79 (1997), and that defendants "can . . . disclaim liability while offering that judgment be entered as so specified," id. § 3002, at 93. "[S]uch a [disclaimer] provision may present nice questions if the offer provides for injunctive relief that is authorized only after a finding of a violation." Id. It is a very similar "nice question" with which we find ourselves presented here.

We turn, next, to four rules established in the case law that have some bearing on the issue. First, the standard for granting a permanent injunction is actual success on the merits. See, e.g., Hard Rock Cafe Int'l (USA) Inc. v. Morton, 1999 WL 701388, at *4 (S.D.N.Y. 1999). Hence, it could be argued that, having ordered a permanent injunction, this Court determined, ipso facto, that Plaintiff prevailed on its underlying trademark and copyright claims. Like Rule 52(a), however, this rule would seem to apply only when a court must decide whether a permanent injunction should issue. In endorsing the agreement embodied in the permanent injunction Order, the Court did not necessarily determine that Plaintiff had actually succeeded on the merits of its infringement claims. Hence, this rule is inconclusive.

Second, in SEC v. Bausch & Lomb, Inc., 82 F.R.D. 50, 51 (S.D.N.Y. 1979), the defendants, in consenting to a permanent injunction "neither admitted nor denied the allegations of the complaint [but] . . . . specifically waive[d] their right to require the Court to make findings of fact and conclusions of law." This case thus supports the view that liability should not be inferred from a defendant's consent to a permanent injunction.

Third, support for this view is likewise provided by a Second Circuit opinion involving claims similar to those brought by Plaintiff here, albeit a somewhat different procedural history. In Goodheart Clothing Co., Inc. v. Laura Goodman Enters., Inc., 962 F.2d 268 (2d Cir. 1992), a hearing was held on, and the court granted, plaintiff's motion for a preliminary injunction. Defendants then tendered a Rule 68 offer of judgment that provided for a permanent injunction, and the court accordingly issued an order of permanent injunction. Plaintiff then filed an application for costs and attorney fees under § 35(a) of the Lanham Act. The issue on appeal was whether the district court's finding (in its opinion granting the preliminary injunction) that defendant had acted in bad faith was law of the case for the purposes of the application for attorney fees. See id. at 272-74. The Court of Appeals ruled that, despite language in the district court's order purporting to incorporate its opinion on the motion for a preliminary injunction, the issue of defendant's bad faith, for purposes of the application for attorney fees, could not be taken as settled by the court's finding of bad faith in its preliminary injunction opinion. See id. at 274 ("It would . . . be anomalous at least in most cases . . . to regard the initial ruling as foreclosing the subsequent, more thorough consideration of the merits that the preliminary injunction expressly envisions."). Although this holding is thus not directly on point, it is consistent with the proposition that, unless a defendant explicitly concedes an issue in the consent to a permanent injunction, a court cannot infer the establishment of this issue from the defendant's consent.

In contrast, two Court of Appeals decisions provide some support for the view that liability can be inferred from consent to a permanent injunction, in a case from the closely related area of patent law, the Second Circuit held that "in a decree, at least in one entered by consent, either an adjudication of infringement, or a grant of some relief from which infringement may be inferred, is essential before any effect of res judicata can be given to it on the issue of [patent] validity." Addressograph-Multigraph Corp. v. Cooper, 156 F.2d 483, 485 (2d Cir. 1946). Applying this rule in a patent infringement case, the Eighth Circuit held that "[a]lthough the consent decree, under consideration here, does not explicitly adjudge that the defendants had infringed [plaintiff's patented] device, that finding is implicit in the decree. Infringement was the key issue in the original suit; injunctive relief was sought, and pursuant to consent of the defendants, they were `permanently enjoined from infringing [plaintiff's] patent. . . .' Surely the injunctive relief granted is `relief from which infringement may be inferred.'" Crane Boom Life Guard Co. v. Saf-T-Boom Corp., 362 F.2d 317, 321-22 (8th Cir. 1966). It should be noted, however, that there is no indication in Crane Boom that the consent decree included disclaimers of liability.

Finally, we consider an argument based on § 35(a) of the Lanham Act, i.e., the statutory basis for an award of attorney fees and damages for trademark infringement and/or dilution. Like many other fee-shifting statutes, § 35(a) specifies that attorney fees are recoverable only by the prevailing party to a trademark suit. As such, a considerable jurisprudence has developed on the issue of when a party is to be deemed "prevailing" for the purpose of shifting fees. In suits brought under the civil rights statutes, it is well-established law that "when relief has been obtained by settlement or consent decree . . . without a judicial resolution of the controversy, the plaintiff is the prevailing party for fee award purposes." 1 Albe Conte, Attorney Fee Awards § 3.07, at 145 (2d ed. 1993) (citing Hanrahan v. Hampton, 446 U.S. 754, 100 S.Ct. 1987, 64 L.Ed.2d 670 (1980); Maher v. Gagne, 448 U.S. 122, 100 S.Ct. 2570, 65 L.Ed.2d 653 (1980)); see also Crowder v. Hous. Auth. of Atlanta, 908 F.2d 843, 849 (11th Cir. 1990) (holding that party who had secured injunctive relief by means of adverse party's consent to permanent injunction was prevailing party for purposes of attorney fee award under 42 U.S.C. § 1988). Although it appears that this rule has not been extended to applications for fees under § 35(a), it could be argued that this extension should now be made.

This argument should be resisted, however, because there is a crucial difference between the civil rights fee shifting statute, 42 U.S.C. § 1988, and § 35(a). Like the award of costs under § 35(a), the award of attorney fees under § 1988 depends solely on a party's attaining "prevailing" status. See Hensley v. Eckerhart, 461 U.S. 424, 429, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) (internal citations and quotations omitted) (holding that "a prevailing party should ordinarily recover an attorney's fee unless special circumstances would render such an award unjust"). An award of attorney fees under § 35(a), in contrast, requires, in addition, a judicial determination that the party's infringing conduct was "exceptionally" bad. See Bowmar Instrument Corp. v. Continental Microsystems, Inc., 497 F. Supp. 947, 961 (S.D.N.Y. 1980) ("Costs, in contrast [to attorney fees], should be awarded with respect to the entire action because [ § 35(a) of] the Lanham Act does not limit such an award to `exceptional cases' but makes it one of the routine elements of a prevailing plaintiff's recovery."). Because of this additional requirement, the mere determination that a party has prevailed in a trademark suit does not entitle the party to an award of attorney fees.

In view of this important difference between § 35(a) and § 1988, the § 1988 rule (concerning consent to permanent injunctions) could, at most, be extended analogically to § 35(a); i.e., it could be taken to suggest the rule that, under § 35(a), consent to a permanent injunction suffices to establish that the case is exceptional. The adoption of such a rule, however, would be misguided for at least two reasons. First, it would be inconsistent with established judicial interpretation of what constitutes an "exceptional case" under § 35(a). As is discussed more fully in Section I below, the Second Circuit has held that an exceptional case of trademark infringement or dilution is one involving willfulness, fraud, or bad faith. While it makes sense to hold that obtaining a permanent objection via the defendant's consent counts as prevailing in an action for injunctive relief, it makes far less sense to say that obtaining a permanent objection via the defendant's consent amounts to showing that the defendant infringed a trademark willfully, fraudulently, or in had faith. This is because a finding of willful infringement requires a close examination of the defendant's conduct and state of mind — an examination, moreover, that must be carried out for each alleged trademark violation. If a plaintiff alleges both trademark infringement and trademark dilution, for example, it is possible that the defendant willfully infringed but did not willfully dilute.

Second, such a rule would have the perverse effect of discouraging settlement. Defendants occasionally consent to injunctions because they simply lack the funds required for litigation. In fact, Defendant ELA suggests that this was its reason for consenting to the Court's Order of permanent injunction. (See Elias Aff. ¶ 14 ("The plaintiff knew that we were a tiny company, and thus must have known that we could not afford to litigate.").) More important, defendants frequently consent to injunctions because they believe they are likely to lose on only one or some of the plaintiff's claims. In the present case, for instance, it is especially implausible to contend that Defendant, in consenting to the permanent injunction, conceded liability on Plaintiff's copyright claim based on Defendant's "framing" of Plaintiff's web site within Defendant's web site. As Defendant (correctly) points out, no court to date has held that framing constitutes copyright infringement. (See Mem. Opp. at 3.) Therefore, the proposed rule would create a disincentive to consent; defendants who believed that they were liable on only some of the plaintiff's claims would be less likely to consent to an injunction if their doing so was necessarily construed as an admission of liability on all of the plaintiff's claims. In other words, the argument has the effect of vitiating the practice of including disclaimers of liability in consent agreements. Yet many consent agreements would never be signed without the inclusion of such disclaimers.*fn4

Findings of Fact

Founded in 1897, the Society is a not-for-profit corporation organized and existing under the laws of New York. It has eleven local chapters — each representing a portion of New York State — and a total membership in excess of 30,000. The Society seeks to cultivate, promote, and disseminate information concerning certified public accountants, establish and maintain high standards of integrity, honor, and character among certified public accountants, furnish information regarding accountancy and the practice and methods thereof to its members and the general public, and protect the interests of its members and the general public with respect to the practice of accountancy. (See Mem. Fees, at 2.)

Since 1984, the Society has been using the common-law servicemark "NYSSCPA" to identify itself in connection with services and goods it offers to its professional membership and to the public at large. The Society purports to be the exclusive owner of all rights, title, and interest in the NYSSCPA mark. As such, the Society does not authorize or permit any individual or corporation to use the NYSSCPA mark without written permission or authorization. The Society has numerous "affinity" agreements with various commercial entities that permit the use of the Society's name and the NYSSCPA mark to promote certain goods and services marketed by such entities to the Society's members, e.g., credit cards, courier services, and telephone services. Revenue generated from these agreements are applied to the funding of the Society's operations. (See id. at 3.)

The Society publishes and distributes in interstate commerce two monthly publications, The CPA Journal and The Trusted Professional, and each of the Society's eleven chapters publishes its own periodic newsletter. (See id.) Recent annual expenses for the Society's publications have been in excess of $1.5 million. (See Comp. ¶ 10.) Since 1995, the Society has distributed to members and non-members various goods with the NYSSCPA mark imprinted thereon, e.g., hats, scarves, pins, travel mugs, cups, CD cases, travel bags, sport shirts, sport visors, and paper weights. Similarly, the Society uses the NYSSCPA mark on its promotional material, e.g., business cards, mailing envelops, press releases, and letterhead. (See id. ¶ 11.) Furthermore, the Society receives a good deal of unsolicited media coverage, most of which refers to the society as the NYSSCPA. (See Mem. TRO, at 12.)

On November 18, 1994, the Society registered the domain name "nysscpa.org." and, since March 1997, the Society has operated a web site at this internet address. The web site provides information about the Society, certified public accounting, and accounting in general, including news stories and press releases concerning topics and activities that are of interest to the Society's members. The web site also provides information about Society publications, member services, conferences and social events, the New York State CPA licensing requirements, and CPA societies in other states. Finally, the web site includes a classifieds page, a member directory, and tax forms. (See id. at 4.)

Incorporated in 1996, ELA is a small firm "specializ[ing] in Permanent and Temporary placement of financial, accounting, brokerage and support professionals at all levels throughout the tri-state [New York, New Jersey, Connecticut] area." (Elias Aff. Ex. B.) As of April 1999, ELA had two employees and assets of approximately $23,000. (See id. ¶ 1, Ex. A.) On December 9, 1998, ELA registered the domain name "eric-louis.com". On January 8, 1999, ELA registered the domain name "ericlouis.com". On January 9, 1999, ELA registered the domain name "nysscpa.com". (See Comp. ¶¶ 31, 36.) Shortly thereafter, ELA began operating identical web sites at each of these three internet addresses. (See Elias Aff. ¶ 5.) The home page of each site clearly indicated that the site belonged to ELA, stated that the "site is not affiliated with" the Society, and provided a hyperlink to the Society's web site at "www.nysscpa.org". (Id. Ex. B.) Upon clicking on this hyperlink, the Society's web site would appear "framed" within ELA's site. During such framing, the viewer screen showed (1) a line across the top of the page with the header "Eric-Louis Associates, Inc."; (2) a column along the left hand side of the screen containing user selectable options pertinent solely to Defendant's web site, and an Amazon.com advertisement; and (3) a box taking up the remaining two-thirds of the screen containing the home page of the Society's web site. (See Mem. TRO, ¶ 40; Montague Decl. Exs. M-R.) Furthermore, each of the three sites used "NYSSCPA" as a "metatag" within its HTML code, such that an internet search for NYSSCPA would lead to each of the three sites. (See Comp. ¶ 45; Mem. Fees, at 4.)

Upon learning of Defendant's use of its NYSSCPA mark, the Society, in a letter dated March 25, 1999, demanded that ELA cease and desist its continued use of the "nysscpa.com" domain name and its hyperlinking to and framing of the Society's web site. (See Comp. ¶ 50; Grumet Decl. Ex. L.) In a letter dated March 26, 1999, ELA responded that it would agree to the Society's demands on the condition that the Society paid it $20,000 or provided it, free of charge, an exhibitor's booth at the annual NYSSCPA conference for the next five years. (See Grumet Decl. Ex. M.) In a memorandum dated April 6, 1999, ELA informed the Society that two local CPA firms had expressed interest in purchasing the "nysscpa.com" domain name. (See id. Ex. N.) In a letter dated April 6, 1999, the Society rejected ELA's March 26 offer, and reiterated its cease and desist demand. (See id. Ex. O.) The Society then began preparing a legal action against Defendant, and, in view of Defendant's failure to cease and desist, commenced this action on April 27, 1999.

Conclusions of Law

I. False Designation of Origin

Section 43(a) of the Lanham Act creates a cause of action for "false designation of origin" in relation to goods and services. 15 U.S.C. § 1125(a). Because Plaintiff's mark is unregistered, Plaintiff, to establish false designation of origin, must show that (1) the mark has acquired secondary meaning and (2) there is a likelihood of confusion as to the goods or services in question. See Centaur Communications Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1221 (2d Cir. 1987).

A. Secondary Meaning

A mark has acquired secondary meaning if "the primary significance of the term in the minds of the consuming public is not the product but the producer." Id. (citations and internal quotations omitted). Second Circuit courts utilize the following six factors to determine whether a mark has acquired secondary meaning: (1) advertising expenditures, (2) consumer studies linking the mark to a source; (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark's use. See id. at 1222. No single factor is determinative and every element need not be proved. See id. The most important factor, however, is (5). See 20th Century Wear, Inc. v. Sanmark-Stardust, Inc., 815 F.2d 8, 10 (2d Cir. 1987) (holding that "[a] finding that [a defendant] had intentionally copied [the plaintiff's] mark could . . . be persuasive, if not conclusive, evidence of consumer recognition and goodwill"). Defendant's use of the "nysscpa.com" domain name and the "NYSSCPA" meta-tag is clear evidence of an attempt to plagiarize the Society's mark. According to Defendant's web site, Defendant's partners are members of the Society, and thus there is little chance that they were unaware that the Society uses the NYSSCPA mark to identify itself. (See Elias Aff. Ex. B.) Furthermore, the name "nysscpa" neither appears to be related to any characteristic of Defendant's business, nor has Defendant asserted any such relation. Therefore, it is highly likely that Defendant adopted the "nysscpa.com" domain name and employed the "NYSSCPA" meta-tag with a clear intent to copy the Society's NYSSCPA mark.

Four of the remaining five factors also support a finding of secondary meaning. As to factor (1), Plaintiff has presented uncontroverted evidence that the Society spends in excess of $1.5 million each year on advertising and promotion, much of which involves the NYSSCPA mark. (See Grumet Decl. ¶ 9.) Similarly, as to factor (3), Plaintiff has submitted a number of examples of unsolicited media coverage of the Society, each of which involves usage of the NYSSCPA mark. Turning to factor (4), the fact that the Society has in excess of 30,000 members is strong evidence of the Society's sales success. (See id. ¶ 3.)

The sole factor weighing in Defendant's favor is factor (2), as Plaintiff has failed to provide evidence of consumer studies linking the mark to its source.

In view of the foregoing analysis, the Court finds that the NYSSCPA mark has acquired secondary meaning.

B. Likelihood of Confusion

In deciding whether a likelihood of consumer confusion exists, Second Circuit courts employ the eight factor test established by Judge Friendly in Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961):(1) the strength of the plaintiff's mark; (2) the degree of similarity between the two marks; (3) the competitive proximity of the products or services; (4) the likelihood that the plaintiff will "bridge the gap" between the two markets; (5) the existence of actual confusion; (6) the defendant's good faith in adopting its mark; (7) the quality of the defendant's product; and (8) the sophistication of the purchasers.

Furthermore, if the evidence shows that the defendant intentionally copied the plaintiff's mark, likelihood of confusion will be presumed as a matter of law. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987).

Plaintiff alleges that each of three distinct aspects of Defendant's conduct causes a likelihood of confusion: (A) Defendant's use of the "nysscpa.com" domain name; (B) Defendant's use of Plaintiff's NYSSCPA mark as a meta-tag; and (C) Defendant's "framing" of the contents of Plaintiff's web site within its own web site Because (A) and (B) are functionally quit similar, we first consider them together (C) is discussed separately thereafter.

1. The "nysscpa.com" Domain Name and the "NYSSCPA" Meta-Tag

Having found, in Section I.A above that Defendant intentionally copied Plaintiff's NYSSCPA mark, we can presume as a matter of law that the likelihood of confusion requirement is satisfied in this case.

Furthermore, an analysis of the facts of this case in terms of the eight Polaroid factors confirms this conclusion. Factor (1) clearly weighs in Plaintiff's favor. It was precisely the recognizability of the Society's mark that led Defendant to adopt the "nysscpa.com" domain name and the "NYSSCPA" meta-tag. Similarly, the facts that this meta-tag is identical to the Society's mark, and that this domain name is nearly identical to the Society's mark, provides — pursuant to factor (2) — strong support for the conclusion that Defendant's use of these two names was likely to confuse consumers. Many persons searching for the Society's web site, but unaware of its precise address, would either assume that it was located at nysscpa.com or attempt to access it by typing the Society's NYSSCPA mark into a search engine.

Turning to the third factor, competitive proximity, the parties' respective web sites are both located on the World Wide Web, and the "sites compete for the same audience — namely, Internet users who are searching for a web site that uses plaintiff's mark as its address." Planned Parenthood v. Bucci, 1997 WL 133313, at *8 (S.D.N.Y. 1997). On the other hand, despite the fact that Plaintiff's site includes a classified advertisement section, Plaintiff and Defendant are, for the most part, not in direct competition with each other. Those persons seeking Plaintiff's site with the intention of viewing the classified job advertisements — and who are diverted to Defendant's site by means of the "nysscpa.com" domain name or the "NYSSCPA" meta-tag-may, indeed, end up using Defendant's services rather than Plaintiff's classifieds. But most persons so diverted will merely be confused, even if only momentarily, and then resume trying to find the Society's actual site. As is explained below, however, this momentary confusion suffices to establish a likelihood of confusion. As such, even if this factor were placed on Defendant's side of the scale, it would be of little moment.

"The fourth factor looks to whether the senior user of the mark is likely to enter the market in which the junior user is operating, that is, bridge the gap." Centaur Communications, 830 F.2d at 1227. In the sense that the two sites are competing for the same users, viz., those looking for a web site that uses Plaintiff's NYSSCPA mark as its address, there is no gap to bridge. More broadly, however, it appears unlikely that the Society intends to enter the financial professional placement business. This factor, therefore, can have little impact on our determination.

Because Plaintiff presents only one instance of actual confusion, (see Mem. TRO, at 15), this factor provides little support for a ...


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