allege that S & H's use of the marks dilutes the distinctive
quality of GFC's allegedly famous mark in violation of Section
43(c) of the Lanham Act and New York General Business laws.
I. FACTUAL FINDINGS
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).
However, "[s]ignificant delay in applying for injunctive relief
in a trademark case tends to neutralize any presumption that
infringement [or dilution] alone will cause irreparable harm
pending trial, and such delay alone may justify denial of a
preliminary injunction for trademark infringement." Citibank,
N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985) (internal
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) Strength Of Mark
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 scope of Plaintiff's mark will
impact its strength of mark. See W.W.W. Pharmaceutical, 984
F.2d at 567.
The GreenPoint mark is not inherently distinctive because it is
a descriptive geographic term used by many businesses in the same
geographic area. (Decl. Garrod, Ex. 3 (98% of the 214 active New
York corporations using the "Greenpoint" name belonged to
unrelated third party users); Def's Court Ex. J (identifying use
of "Greenpoint" name by three insurance companies located in
Brooklyn and Queens)). Further, as previously stated, Plaintiff
has failed to established its secondary meaning. Use of
Plaintiff's mark is primarily limited to the New York
metropolitan area. Finally, there has been no showing that use of
the term "GreenPoint," without the modifier "Bank" triggers an
association with the Bank for any significant percentage of the
b) Degree of Similarity Between the Marks
Similarity is weighed in light of whether (1) the marks appear
in connection with other identifying information,
and (2) the total effect of the designation. W.W.W.
Pharmaceutical, at 573. Where a similar mark is used in
conjunction with a company name, the likelihood of confusion is
lessened. McGregor-Doniger v. Drizzle, 599 F.2d 1126, 1134 (2d
When comparing similar domain names the "proper starting point
should be the parties' respective trademarks, rather than domain
addresses. The trademarks provide a broader dimension for
analysis. Website addresses themselves, characterized by the
style of uniformly lower case lettering and compressed wording,
do not adequately express certain nuances of common meaning and
understanding of words in the marks at issue in this case."
BigStar Entertainment, Inc. v. Next Big Star Inc., 54
U.S.P.Q.2d 1685, 1698, 105 F. Supp.2d 185 (S.D.N.Y. 2000).
In terms of similarity between the marks, at least the proposed
trademark "Green Points" is similar to Plaintiff's stylized
"GreenPoint." Defendants have not demonstrated that the company
name S & H always precedes the "Green Points" mark. Furthermore,
"greenpoint.com" and "greenpoints.com" are similar. However, to
the degree that some confusion may inevitably arise from the
proximity of the party's domain names, the Court believes the
confusion would not be actionable because of the weakness of the
other Polaroid factors.
c) The Proximity of the Products
"This factor addresses whether and to what extent the parties
compete with each other." Conopco, Inc. v. Cosmair, Inc.,
49 F. Supp.2d 242, 251 (S.D.N.Y. 1999) (citing W.W.W. Pharmaceutical
Co., 984 F.2d at 573). "In making this assessment `the court may
consider whether the products differ in content, geographic
distribution, market position, and audience appeal.'" Id.
(quoting W.W.W. Pharmaceutical Co at 573).
S & H Greenpoints is a program allowing consumers to earn
points toward a variety of merchandise and services. GreenPoint
Financial is a banking and mortgage lending service. Although
both operate on the Internet, the diversity of services offered,
precludes a finding of likelihood of confusion.
Plaintiff attempts to mask the inherent differences between the
two companies. While Plaintiff alleges in its brief that the
parties provide similar products as Plaintiff provides "online
banking . . . while Defendants offer online services," see Mem.
Law at 17, the services offered by the two companies are truly
apples and oranges.
d) Bridging the Gap
This factor refers to the likelihood of Plaintiff's entry into
Defendants' area of commerce.
Plaintiff deals in personal savings accounts, specialized
mortgages and financing of manufactured housing. Plaintiff issues
credits cards. Defendants provide no banking services and provide
redemption of points for consumers who purchase products and
services at institutions that are clients of the Defendant. One
such client, includes a bank based in Boston that provides credit
cards. The Court does not foresee, on the evidence presented,
that the Plaintiff will engage in point redemption for consumer
e) Evidence of Actual Confusion
Actual confusion means "consumer confusion that enables a
seller to pass off his goods as the goods of another." See
Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955,
963 (2d Cir. 1996) (quoting W.W.W. Pharmaceutical Co. v.
Gillette Co., 984 F.2d 567, 574 (2d Cir. 1993)). To show actual
confusion the senior user must demonstrate that the alleged
infringing party "`could inflict commercial injury in the form of
either a diversion of sales, damage to goodwill, or loss of
control over reputation.'" Sports Authority, Inc., 89 F.3d at
"[T]he relevant confusion is that which affects `the purchasing
and selling of the goods or service in question.'" See Lang
v. Retirement Living Pub. Co., 949 F.2d 576, 583 (2d Cir.
1991). As such, a suit for "trademark infringement protects only
against mistaken purchasing decisions and not against confusion
generally." Lang, 949 F.2d at 583.
Evidence supporting existence of actual confusion, includes
"mistaken orders, complaints from customers or website visitors,
market surveys or other signs of uncertainty reflecting actual
consumer confusion." See Big Star Entertainment, Inc. v. Next
Big Star Inc., 54 U.S.P.Q.2d at 1705, 105 F. Supp.2d at 213.
Plaintiff's counsel concedes that the purpose of the survey
evidence was to demonstrate dilution rather than actual
confusion. Plaintiff's counsel states that the survey is
"strictly a dilution study within the geographic area that was
surveyed among the respondents that were surveyed."
For the reasons stated above, under the likelihood that the
senior user will bridge the gap, the Court finds no evidence of
the existence of actual confusion despite random e-mails to
Plaintiff's bank from potential customers whom, in the Court's
opinion, they would be better off without, inquiring about gift
f) The Junior User's Bad Faith vel non In Adopting The Mark
Based on the Defendant's history with S & H Green Stamps, there
is no evidence of bad faith on the part of the Defendants in
adopting their mark.
g) The Quality Of The Junior User's Product
There has been no evidence presented attacking the quality of
the Defendants' product.
h) The Sophistication Of The Relevant Consumer Group.
As indicated at the hearing on September 13, 2000, the Court
finds that the Plaintiff's consumer groups because of their
specialized markets are not likely to be confused by a
gift-redemption program. If anything, the danger of confusion may
lie in the Defendant's relevant consumer group.
For the reasons stated above, the Court holds that there is no
secondary meaning of "GREENPOINT" on a national or statewide
level, making the mark generally weak outside of the greater
Further, the Court concludes that, notwithstanding some
evidence of consumer error, there is not likelihood of confusion
between the respective marks. New York State Trademark
Infringement likewise requires proof of likelihood of confusion.
GFC has failed to show "actual confusion." No purchases have
been made in error and no diversion of goodwill has been shown.
Isolated e-mails are, at most, indicative of initial consumer
confusion. However, a business owner in search of a commercial
mortgage is no more likely to seek out S & H Greenpoints'
consumer rewards currency than an S & H customer is likely to
redeem points for a soccer ball from GreenPoint Financial.
Finally, the notoriety of the "S & H Greenstamps" program
further diminishes the likelihood of confusion. Accordingly,
Plaintiff has failed to establish a likelihood of success on the
merits or serious questions going to the merits on its federal or
state statutory infringement claims.
Dilution is "the lessening of the capacity of a famous mark to
identify and distinguish goods or services." 15 U.S.C. § 1127.
As Professor McCarthy has stated:
To save the dilution doctrine from abuse by
plaintiffs whose marks are not famous and
distinctive, a large neon sign should be placed
adjacent wherever the doctrine resides, reading: "The
Dilution Rule: Only Strong Marks Need Apply."
4 McCarthy on Trademarks § 24:108 (2000). The Second Circuit