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March 30, 2001


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


This action, filed on March 24, 2000, arises out of defendant's use of the term "Slinky" to advertise women's apparel for home shopping customers. Plaintiff, the owner of the trademark in SLINKY for "fabrics used in clothing and household products," alleges claims for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1114, 1125(a), and New York law and dilution under Section 360-1 of the New York General Business Law. Defendant moves for summary judgment as to each of plaintiff's claims on the ground that plaintiff's mark is generic. For the reasons set forth below, the motion is denied.

I. Factual Background

Horizon alleges that its first use of the term "slinky" as a mark in connection with fabrics, specifically a combination of acetate and spandex, occurred on July 16, 1991. (Defendant QVC, Inc.'s Local Rule 56.1 Statement of Material Facts As to Which There is No Genuine Issue to be Tried ("Def.56.1") ¶ 1; Plaintiff's Local Rule 56.1 Statement of Material Facts As to Which There is A Genuine Issue to Be Tried ("Pl.56.1") ¶ 1; Schechter Decl. ¶ 4.) On September 16, 1993, Horizon filed an intent to use application for registration of the mark SLINKY in the United States Patent and Trademark Office ("PTO").*fn2 On November 7, 1995, the mark was registered on the Principal Register covering the use of said mark on "fabrics used in the manufacture of clothing and household products." (Def. 56.1 ¶ 4; Pl. 56.1 ¶ 4.)

Since Horizon's first use in 1991, certain members of the media, trade, and consuming public have come to employ the term "slinky" to describe a stretchy, fluid or sinuous-looking fabric normally consisting of acetate or spandex, and used in dresses and women's sportswear. QVC states that it uses the terms "slinky," "slinky knit," and "slinky fabric" to describe such fabric and the apparel made therefrom. (Def. Mem. at 19-20.) Plaintiff filed this action to enjoin such use on the ground it is infringing, and to recover damages. Prior to discovery, QVC moved for summary judgment on the ground that the generic nature of the terms in question bar Horizon's claims. QVC's argument is twofold. First, it contends that the term "slinky" was generic to the relevant category of products prior to Horizon's use and registration. (Def. Mem. at 2-6, 21-23.) Second, it contends that the public has appropriated the term "slinky" for the stretchy, fluid, and sinuous fabric and women's apparel made from acetate, spandex and other man-made fibers, therefore precluding exclusive use of the term by any manufacturer. (Def. Mem. at 19.) Horizon contends that the references to "slinky" fabrics or garments in the media and trade are not generic references, but rather references to its trademarked fabric. (Def. 56.1 ¶¶ 7-9; Pl. 56.1 ¶¶ 7-9.)

II. Discussion

A. Summary Judgment Standard

A district court may grant summary judgment only if it is satisfied that "there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The burden rests on the moving party to demonstrate the absence of a genuine issue of material fact, which may be satisfied if it can point to the absence of evidence necessary to support an essential element of the non-moving party's claim. Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d Cir. 1995); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). All inferences and ambiguities are resolved in favor of the party against whom summary judgment is sought. Gallo v. Prudential Residential Servs., L.P., 22 F.3d 1219, 1223 (2d Cir. 1994) (citations omitted).

If the moving party meets its burden, the opposing party must set forth "specific facts showing there is a genuine issue for trial." Rule 56(e); See also Brady v. Town of Colchester, 863 F.2d 205, 210 (2d Cir. 1988) ("[W]here the moving party has attempted to demonstrate that the nonmoving party's evidence is insufficient as a matter of law to establish his claim, the burden shifts to the nonmoving party to come forward with persuasive evidence that his claim is not `implausible'.") (citation omitted). When reasonable minds could not differ as to the import of the proffered evidence, then summary judgment is proper. Anderson, 477 U.S. at 250-52, 106 S.Ct. 2505; Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir. 1991). Moreover, "mere conclusory allegations, speculation or conjecture will not avail a party resisting summary judgment." Cifarelli v. Village of Babylon, 93 F.3d 47, 51 (2d Cir. 1996). Further, although the determination of the genericness of a trademark is a question of fact, Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir. 1992), such determination may be made on a motion for summary judgment. See, e.g., GMT Prods. v. Cablevision of New York City, 816 F. Supp. 207, 210 (S.D.N.Y. 1993); Gear, Inc. v. L.A. Gear California, Inc., 670 F. Supp. 508, 514 (S.D.N.Y. 1987), vacated in part pursuant to settlement, 13 U.S.P.Q.2d 1655 (S.D.N.Y. 1989).

B. Generic Terms under Trademark Law

1. Generic versus Descriptive Terms

Terms are classified in four categories for the purposes of trademark protection. In increasing degrees of distinctiveness, and protectibility, the categories are: (i) generic, (ii) descriptive,*fn3 (iii) suggestive, and (iv) arbitrary or fanciful. See Gruner & Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1075-76 (2d Cir. 1993); Abercrombie, 537 F.2d at 9-11 (describing each category).

A term is generic when it refers to the genus or class of product, rather than a particular product; a generic term is one which is commonly used as the name for a type of goods. Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 100 (2d Cir. 1989) (citing Abercrombie & Fitch, 537 F.2d at 9); Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir. 1977). The generic name of a product can never function as a trademark to indicate the origin of that product. Murphy Door Bed, 874 F.2d at 101 ("Neither statutory law, namely the Lanham Act, nor common law supports a claim for trademark infringement when the mark in question is generic.") As McCarthy states, "[t]he name of a product or service itself — what it is — is the very antithesis of a mark." 2 McCarthy on Trademarks and Unfair Competition § 12-1 at 12-3 (4th ed. 1999) (hereinafter "McCarthy"). Moreover, as Judge Friendly observed, to permit exclusive trademark rights in a generic name "would grant the owner of a mark a monopoly, since a competitor could not describe his goods as what they are." CES Publ'g Corp. v. St. Regis Publications, 531 F.2d 11, 13 (2d Cir. 1975). The trademark laws are primarily consumer protection laws, designed to prevent confusion among the public resulting from fraud and deception in the marketing and sales of products. See Robot Wars LLC v. Roski, 51 F. Supp.2d 491, 494 (S.D.N.Y. 1999); 1 McCarthy ยงยง 2.1-2.2 at 2-2 to 2-3. With generic terms, such protection is unnecessary, because consumers understand exactly what they are buying by knowing ...

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