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
Plaintiff Horizon Mills Corp. ("Horizon")*fn1 is a corporation
organized and existing under the laws of New York, with its
principal place of business in New York, New York. (Complaint ("Compl.")
¶ 3.) It is a textile converter, involved primarily in developing and
marketing both knit and woven textiles for the "womanswear" trade.
(Declaration of Joel Schechter dated Aug. 29, 2000 ("Schechter Decl.")
¶ 2.) Defendant QVC, Inc. ("QVC") is a corporation organized and
existing under the laws of Pennsylvania with its principal place of
business in West Chester, Pennsylvania. (Compl. ¶ 4.) According to
QVC, it has been engaged since 1986 in the business of providing
home-shopping retail services. In addition to its cable television
network, it also operates an online retail service called "iQVC," and
markets goods through mail-order catalogs and retail outlets in
Pennsylvania and Delaware. (Memorandum of Law in Support of Motion for
Summary Judgment ("Def.Mem.") at 18.) Through these commercial channels,
QVC markets, inter alia, women's apparel made from acetate and spandex
and man-made fibers, under certain private labels and other brand name
designers. (Def. 56.1 ¶ 10; Pl. 56.1 ¶ 10.)
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
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.)
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 §§ 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 ...