The opinion of the court was delivered by: Robert L. Carter, District Judge.
Plaintiff is a New York corporation with its principal place of
business in New York City. Plaintiff is the exclusive domestic
distributor of "Gilson-Created" opal gem stones, which are authentic
laboratory-created opals with the same optical, physical and chemical
properties as real opals. Plaintiff supplies 85%-90% of synthetic opals
nationwide. Plaintiff has used the terms "laboratory-created,"
"synthetic" and "Gilson-Created" to identify and distinguish its goods
continuously since June 1, 1990. None of these terms are registered
HSN is a Delaware corporation with its principal place of business in
St. Petersburg, Florida. HSN advertises and sells "Technibond Created
Opal" products. Carling is a Nevada corporation with its principal place
of business in Beverly Hills, California. Carling is the owner of the
"Suzanne Sommers Collection" trademark, and engages in the advertising
and sale of "Suzanne Somers' Created Opal" products. Defendants' opal
products are allegedly cheap plastic imitations made out of polymer or
resin filled silica lattice.
Plaintiff filed this complaint on January 4, 2001, seeking injunctive
relief and damages based on defendants' marketing their plastic imitation
opals as "laboratory-created," "synthetic" and "[manufacture name]
-created" in interstate commercial advertisements, including via
television and the internet. Plaintiff alleges that the use of these
designations is intended to reflect the superior quality of plaintiff's
authentic synthetic opals.*fn1
The court may dismiss plaintiff's complaint pursuant to Rule 12(b)(6)
only if it "`appears beyond doubt that the plaintiff can prove no set of
facts in support of his claim which would entitle him to relief.'" Cooper
v. Parkay, 140 F.3d 433, 440 (2d Cir. 1998) (quoting Conley v. Gibson,
355 U.S. 41, 45-46(1957)). In ruling on defendants' motion; the court
must accept as true all factual allegations in the complaint and draw all
reasonable inferences in favor of plaintiff. See Bernheim v. Litt,
79 F.3d 318, 321 (2d Cir. 1996).
Counts I and III allege false designation of origin in violation of
§ 43(a)(1)(A) of the Lanham Act*fn2 and unfair competition under New
law, respectively.*fn3 Defendants assert that these
allegations fail to state a claim upon which relief can be granted
because the terms "laboratory-created," "synthetic" and "[manufacture
name] -created" are generic, and therefore not entitled to trademark
Defendants are correct that generic terms, that is, terms that refer to
a class of product rather than a particular product, are not entitled to
trademark protection. See Abercombie & Fitch Co. v. Hunting World. Inc.,
537 F.2d 4, 9 (2d Cir. 1976). However, whether a term is generic or
descriptive is a question of fact. See Textile Deliveries. Inc. v.
Stagno, 1990 WL 155709, at *5 (S.D.N.Y. Oct. 9, 1990) (Keenan, J.),
aff'd, 52 F.3d 46 (2d Cir. 1995). At this early stage, when plaintiff has
not had an opportunity to submit supportive proof, such a factual
analysis is inappropriate.
Moreover, even assuming, arguendo, that the terms in question are
generic, "such a finding does not close all avenues of relief." Forschner
Group. Inc. v. Arrow Trading Co., Inc., 30 F.3d 348, 357 (2d Cir. 1994).
Plaintiff may seek protection under § 43(a)(1)(A) if (1) goods or
services are involved, (2) interstate commerce is affected, (3) "an
association of origin by the consumer" between the generic term and the
first user exists (i.e. secondary meaning), and (4) there is "a
likelihood of consumer confusion" as to the goods' or services' source
when the generic term is applied to the second user's goods or services.
*fn5 See Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137,
150 (2d Cir. 1997) (citations omitted),; Sun Trading Distrib. Co. v.
Evidence Music, 980 F. Supp. 722, 727 (S.D.N.Y. 1997) (Chin, J.). The
same claim may be made under New York common law of unfair competition,
except that the state law action requires an additional element of bad
faith or intent. See Genesee, 124 F.3d at 149.