The opinion of the court was delivered by: Batts, District Judge.
The Court incorporates the briefings by the parties and the
record of the hearing of September 13-14, 2000 and assumes
familiarity with the facts set forth therein. Plaintiff,
primarily known as a savings bank in Brooklyn since 1868, has
expanded into other areas of New York State and Connecticut, not
only as a savings bank, but also specializing in mortgages.
(Decl. Humphrey ¶¶ 2-3, 6. Supp. Decl. Humphrey ¶ 3). Since 1997,
Plaintiff has expanded into mortgage lending and financing of
manufactured housing and now has 24 mortgage offices and 45
housing finance offices across the country. (Decl. Humphrey ¶¶
10, 15). In addition, Plaintiff offers banking services over the
Internet. (Humphrey Decl. ¶¶ 20-21).
Plaintiff now seeks to prevent alleged infringement of what
they claim to be their trademark, the word(s) "GREENPOINT",
standing alone, by the Defendants. Defendants, historically
equally well-known for their "S & H Green Stamp" program, which
reached a national audience in the 60's and 70's, have used the
term "Greenpoints" in conjunction with their marketing, on a
national level, to potential clients of their gift redemption
program. Despite historic references, it is clear to the Court
that Plaintiff first claimed use of the registered term
"GREENPOINT" in 1995 and Defendants first used "GREENPOINTS" in
1996. Notwithstanding Plaintiff's claimed first use of a stylized
"GreenPoint" mark in 1995, Plaintiff presented evidence of
advertising utilizing the phrase "The Green Point" as early as
1985. (Pl.'s Ex. 6).
The facts presented by the Plaintiff in their papers and at the
hearing, do not support national use or recognition of GreenPoint
with them. At best, the facts presented by Plaintiff raise the
question of distinctive mark or secondary meaning under the New
York State anti-dilution act. See New York Gen. Bus. Law §
A. Preliminary Injunction Standard
"In cases involving claims of trademark infringement and
dilution, as in other types of cases, a party seeking a
preliminary injunction must demonstrate (1) the likelihood of
irreparable injury in the absence of such an injunction, and (2)
either (a) likelihood of success on the merits or (b)
sufficiently serious questions going to the merits to make them
fair ground for litigation plus a balance of hardships tipping
decidedly toward the party requesting the preliminary relief."
Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168
(2d Cir. 2000). "The movant need not show that success is
certain, only that the probability of prevailing is `better than
fifty percent.'" BigStar Entertainment v. Next Big Star Inc,
105 F. Supp.2d 185 (S.D.N.Y. 2000) (quoting Wali v. Coughlin,
754 F.2d 1015, 1025 (2d Cir. 1985)).
"In the context of trademark . . . injunctions, the requirement
of irreparable harm carries no independent weight, as [the Second
Circuit has] held that a showing of likelihood of confusion . . .
establishes irreparable harm." Genesee Brewing Co. v. Stroh
Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997) (citations
omitted). "Proof of such confusion also serves as additional
evidence with respect to the separate finding that must be made
of plaintiff's likelihood of success on the merits." Church of
Scientology Int'l v. Elmira Mission of Church of Scientology,
794 F.2d 38, 41 (2d Cir. 1986). Finally, a likelihood of dilution
establishes irreparable harm, because "[d]ilution is itself an
injury which [cannot] be recompensed by money damages." Deere &
Co. v. MTD Prods., Inc. 860 F. Supp. 113, 122 (S.D.N.Y.),
aff'd, 41 F.3d 39 (2d Cir. 1994).
Accordingly, because GFC delayed approximately 4 months in
requesting injunctive relief, no presumption of irreparable harm
B. Service Mark Infringement
To prevail on a claim for infringement under the Lanham Act, a
plaintiff must show that (1) it has a distinctive mark subject to
protection; and (2) the defendant's mark results in a likelihood
of confusion. Estee Lauder Inc. v. The Gap, Inc.,
108 F.3d 1503, 1508 (2d Cir. 1997).
1. Protectability of the Mark
Plaintiff's "GREENPOINT" mark is "descriptive of the geographic
origin of a product," here Greenpoint, Brooklyn, and "will not
receive trademark protection absent proof of secondary meaning."
Forschner Group, Inc. v. Arrow Trading Co., Inc., 30 F.3d 348,
348 (2d Cir. 1994); (Humphrey Decl).
The "term has acquired a secondary meaning in its particular
market [if] the consuming public primarily associates the term
with a particular source." Bristol-Myers Squibb Co. v.
McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir. 1992).
Six factors have been identified to help establish secondary
meaning. They are (a) advertising expenditures*fn1; (b) consumer
studies linking the mark to a source; (c) unsolicited media
coverage of the product; (d) sales success; (e) attempts to
plagiarize the mark; and (f) the length and exclusivity of the
mark's use. See Centaur Communications, Ltd. v. A/S/M/
Communications, 830 F.2d 1217, 1222. While each factor does not
have to be proved and no single factor is determinative (id.),
Plaintiff must satisfy a "heavy" burden because "[p]roof of
secondary meaning entails vigorous evidentiary requirements."
20th Century Wear Inc., v. Sanmark Stardust Inc., 747 F.2d 81,
90 (2d Cir. 1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1755,
84 L.Ed.2d 818 (1985) (quoting Ralston Purina Co. v. Thomas J.
Lipton, Inc., 341 F. Supp. 129, 134 (S.D.N.Y. 1972)).
The critical question is whether the term "GREENPOINT" had
gained secondary meaning by the time S & H Greenpoints entered
the market in 1996. See PaperCutter, Inc. v. Fay's Drug Co.,
900 F.2d 558, 564 (2d Cir. 1990). To establish secondary meaning
within a disputed market, courts have also considered whether the
senior user had established secondary meaning throughout the
relevant disputed marketplace. See, e.g., Centaur
Communications, 830 F.2d at 1226 (strength of a mark should be
examined in its commercial context); Frank Brunckhorst Co. v. G.
Heileman Brewing Co., Inc., 875 F. Supp. 966, 977 (E.D.N.Y. 1994)
(national advertising campaign established national secondary
Plaintiff has not put forth evidence demonstrating that
GreenPoint has achieved secondary meaning either in New York or
nationally. While its survey, assuming its validity, may
demonstrate some name recognition in the New York metropolitan
area for the term "Greenpoint Bank", this is insufficient to
establish secondary meaning, for either federal or state
infringement purposes, for the term "GREENPOINT". In addition,
the flaws in the survey, from lack of objectivity in creation and
determination of parameters because of the involvement of
Plaintiff's law firm, lack of a control group, and the addition
of questions a third of the way into the sampling, cast serious
doubts on the value of the survey and any conclusion the
Plaintiff seeks to draw therefrom.
In addition, although Plaintiff has offered some evidence of
advertising throughout the New York metropolitan area, it has not
demonstrated exclusivity within the region. A quick glance
through the Brooklyn phone directory establishes that more than
fifty other establishments conduct business under the
"Greenpoint" name. Such significant third party usage also
undermines Plaintiff's claim of secondary meaning. See, e.g.,
Allied Maintenance Corp. v. Allied Mechanical, Inc., 42 N.Y.2d 538,
399 N.Y.S.2d 628, 369 N.E.2d 1162, 198 U.S.P.Q. 418, 422
(1977) (noting numerous other phone directory listings in denying
exclusivity); Exquisite Form Industries, Inc. v. Exquisite
Fabrics of London, 378 F. Supp. 403, 410 (S.D.N.Y. 1974) (same).
Accordingly, for the reasons stated above, the Court remains
unconvinced that the public associates the term "GREENPOINT" with
Plaintiff's banking service.
2. Likelihood of Confusion
In order to succeed in a trademark infringement suit, Plaintiff
must also prove that "there is a likelihood of confusion, or, in
other words, that numerous ordinary prudent purchasers are likely
to be misled or confused as to the source of the product in
question because of the entrance in the marketplace of
defendant's mark." Gruner, 991 F.2d at 1077. There must be an
"appreciable number" of confused purchasers to sustain this
burden. Mushroom Makers, Inc. v. R.G. Barry Corporation,
580 F.2d 44, 47 (2d Cir. 1978).
Courts analyzing likelihood of confusion must consider the
eight-factor Polaroid test articulated in Polaroid Corp. v.
Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). The
factors are a) strength of mark; b) degree of similarity between
the marks; c) the proximity of the products; d) the likelihood
that the senior user of mark will bridge the gap; e) evidence of
actual confusion; f) the junior user's bad faith vel non in
adopting the mark; g) the quality of the junior user's product;
and h) the sophistication of the relevant consumer group.
In the context of the Internet, the Ninth Circuit has
considered three factors: (1) the virtual identity of the marks;
(2) the relatedness of plaintiff's and defendant's goods; and (3)
the simultaneous use of the web as a marketing channel, as "most
important." Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1054-58 (9th Cir. 1999).
A mark's strength is assessed by (1) the degree to which it is
inherently distinctive; and (2) the degree to which it is
distinctive in the marketplace. W.W.W. Pharmaceutical Co. v.
Gillette Co., 808 F. Supp. 1013, 1022 (S.D.N.Y. 1992), aff'd,
984 F.2d 567 (2d Cir. 1993). The strength of a mark should be
examined in its commercial context. Centaur Communications, 830
F.2d at 1226, and the geographic ...